Trademark in Canada
A term, a symbol, a design, or any combination of these used in connection with goods (products) or services is referred to as a trademark. It is a helpful technique for setting one entity’s products or services apart from those of other businesses in the marketplace. A trademark may eventually come to stand for both goods and services as well as the standing of the company that offers them. A trademark may therefore be considered valuable intellectual property.
Overview
Registration establishes ownership, serving as a crucial safeguard against trademark infringement and misuse. Although not required, registration is advised because it is a means of validating the exclusive right created by using the trademark in connection with particular goods or services. It is crucial to understand that while registration offers the best legal defence against trademark infringement or misuse, it is not, and cannot ever be, a failsafe solution to all issues arising from trademark usage. A trademark's rights are moreover only protected in Canada when registered with the Canadian Trademark Office. When an organization offers goods or services in connection with a specific trademark in other nations, registration in each of those additional nations should be taken into account.
The act of entering a trademark in the Trademarks Register of the Trademarks Office of the Canadian Intellectual Property Office of Industry Canada constitutes trademark registration in Canada. Unless there are opposition proceedings, in which case the process may be significantly longer, the complete process typically lasts between ten (10) and twelve (12) to eighteen (18) months.
The time it takes for U.S. trademark applications to go from initial filing to registration approval can range from 12 to 18 months. The facts of each application, the applicant's promptness in responding, and whether or not opposition procedures are filed and litigated may cause this timeline to extend.
- Applications for several classes- In Canada, applications for trademarks in many classes are possible.
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Canadian filing requirements- The following documents must be submitted to the Canadian Intellectual Property Office in order to receive a filing date-
- The registration application;
- The trademark representation;
- The list of goods and services;
- The applicant's information; and
- Payment of the filing fee.
Although it is not frequently needed, the Registrar may ask for a certified copy of the priority document if priority of a trademark application is asserted. In Canada, there is no need for a Power of Advocate when submitting a trademark application.
- In Canada, trademark application review, publication, and opposition- The application process consists of a formal examination, an examination for registrability and technical compliance with the Trademarks Act and Trademarks Regulations, as well as a search for earlier trademarks on the register that the requested trademark may be confused with. The Trademarks Journal will publish an advertisement for the application if it meets the requirements for approval. Within two months of the application's advertisement date, anyone may object to a trademark application after publication.
- Grant, duration of validity, and renewal of a trademark- In Canada, there are no grant costs associated with trademark registration. The duration of a Canadian trademark registration is ten years from the filing date. Prior the 10-year term expires, six months before, trademarks may be renewed. Renewal is still possible up to two months after receiving the official notice or six months after the initial term has ended.
- Registration process’s duration- The average processing time for a trademark in Canada, from filing to registration, is between 24-32 months in the case of a straightforward registration process.
- Use condition-If a trademark registration hasn't been used in Canada for the past three years, it may be cancelled on the Registrar's initiative or at a third party's request after paying the applicable fee.
- Using a trademark advocate as representation- It is necessary to conduct trademark prosecution in Canada through a registered Canadian trademark agent for international trademark applicants.
Procedure
- Application- A $336.6 non-refundable cost per trade mark is required to register a trade mark in Canada. This money must be submitted with the application. It is feasible to submit a registration application for a trade mark that isn't yet being used in Canada.
- The initial assessment- The Trademarks Office examiners then conduct a search of the trade-mark records for possibly conflicting marks within the subsequent four months. If there is no apparent dispute, the examiners then determine whether the trade-mark is "clearly descriptive" or "deceptively mis-descriptive" and make an initial decision about its registrability. Additionally, they will determine whether the products' or services' descriptions adhere to legal requirements and use standard commercial terminology. Any negative findings are shared with the applicant by the examiners. It could be necessary for applicants to submit updated applications.
- Approval- Once the conflict search phase, initial registrability assessment, and any application amendments are complete, the trade-marks office will submit the application for advertisement.
- Advertisement- The Trademarks Journal publishes the trade-mark information. Then, any interested party may submit comments to the trade-marks office, for as by filing an opposition against the trade-registration mark's due to suspected confusion with an already-registered mark. In such a case, the application procedure could be terminated or the registration process could be postponed for at least eighteen (18) months if the opposition actions are successful.
- Allowance- A notice of allowance of the application for registration is issued by the trade-marks office if there are no objections within roughly two (2) months following the trade-marks journal's publication.
- Registration- Within six (6) months of the date of the notice of approval, the applicant must pay a fee of $200 per trade-mark in order to advance to the registration stage. The trade-marks office will provide a certificate of registration for each properly registered trade-mark after receiving the registration costs.
Charges
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$379 for one trademark filing (first-class)
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In order to effectively defend your legal rights, a licensed lawyer works on your case, conducts thorough research, and suggests the proper class(es) and good/service description to you.
- Generic Trademark Screen, Updates on Trademark Status, and Monitoring of Opposition.
- Comprehensive review and preparation of the law
- Receive a copy of your comprehensive search report with legal review and analysis ($349 value/mark) with this advocate-guided trademark search.
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If your lawyer believes there may be a problem with your first pick, request a free search for a second mark.
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Processing Priorities
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20-minute consultation with a lawyer
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$285 fee for the government (first class)
- In order to effectively defend your legal rights, a licensed lawyer works on your case, conducts thorough research, and suggests the proper class(es) and good/service description to you.
- Generic Trademark Screen, Updates on Trademark Status, and Monitoring of Opposition.
- Comprehensive review and preparation of the law
Use of trademarks in Canada
Use of the trademark in Canada is one of your obligations as the owner of a trademark. The registration could be removed from the Register of Trademarks by the Registrar if you don't use it. After three years have passed since the day a trademark is registered, the Registrar may launch summary expungement proceedings on their own at any point throughout the registration period or if another party pays the required amount and requests it.
The process starts when the Registrar notifies the registered owner that they must either prove that the trademark has been used in Canada for the past three years or that there are exceptional circumstances that justify not using the trademark. The trademark may be removed from the Register of Trademarks if the owner doesn't respond to the Registrar.
The owner and the opposing party may submit written arguments and show up for an oral hearing after the Registrar has received the requested proof. The owner or other party may file an appeal with the Federal Court of Canada following the Registrar's final determination to expunge, alter, or keep the registration.
The benefits of trademark registration in Canada
- It displays your ownership of the rights to your brand.
- It grants you sole use of the trademark in Canada.
- It discourages other parties from using trademarks that are confusingly similar to yours.
- You can prevent trademark infringement by third parties.
- It guards against fake items
- Depending on other online shops and shopping site 's brand registry, you can be qualified for certain rewards.
FAQ
How much does it cost to apply for a trademark?
The government charge is $285 for the first class and $95 for each subsequent class. The legal service charge is $379 for the first class and $299 for each subsequent class.
For how long a registration lasts?
From the date of registration, your registration is valid for ten years. After then, it may be extended once every ten years.
Who may submit a trademark application?
An individual (or individuals), partnership, trade union, association, joint venture, or corporation can be the owner of a registration.
Just why file for a trademark?
You have certain advantages from trademark registration for your mark that are not available for common law (unregistered) trademarks. A registered trademark holder can, among other things, prosecute infringers in a national court and prevent others from trying to register a similar brand in a related industry. Owners of registered trademarks may also be able to prevent the importation of replicas of their branded goods. Additionally, if there is a disagreement over the ownership of a domain name, having a registered trademark might help you establish ownership.
What is a trademark used for?
A trademark designates your business as the sole source of the goods or services you provide. A trademark is an easily recognizable representation of your brand's goodwill and reputation for quality to the average consumer. A trademark increases in value with time as the brand's reputation is more well-known and as goodwill is built up.