Registration of a trademark in Canada: the essentials

What?

A “trademark” is a “sign or combination of signs” (such as a word, a design, a letter, a three-dimensional shape, a hologram, a moving image, a mode of packaging goods, a color, a sound, a scent, a taste, a texture, and/or the positioning of a sign) by which you can distinguish the goods and/or services in association with which it is used from other goods or services on the market. 

The registration is an entry in a public federal register that gives an owner the exclusive right to use the trademark in Canada in association with specific goods an/or services, and for an initial period of 10 years beginning on the day of the registration. As long as the trademark is used in Canada by its owner in association with the products and/or services, the registration can essentially be renewed indefinitely subject to the payment of a fee, which amount is indexed annually.

Who?

Any person who markets products and/or services in Canada in association with a trademark he or she owns should consider the possibility to register the trademark.

However, not all trademarks are registrable pursuant to the Trademarks Act. Prior to filing an application for registration, it is recommended to conduct a search on the availability of the trademark in question.  We suggest that you contact a member of our intellectual property team for more information on the matter.

When?

An application to register a trademark can be filed at all times with the Canadian Intellectual Property Office (“CIPO”). 

 At the moment, the CIPO’s processing time for an application for registration is of forty (40) months as of the filing of the application. Because of this significant processing time, the value of a trademark could substantially increase between the date when the application for registration is filed and the date when the certificate of registration is issued.  Completing an availability search can ensure that you avoid many years of investments for a trademark that might prove to be not registrable. 

How?

It is highly recommended to meet with a trademark agent, accredited by The College of Patent Agents and Trademark Agents, before undertaking such a process. 

The Trademarks Examination Manual (https://s3.ca-central-1.amazonaws.com/manuels-manuals-opic-cipo/TEM_Fr.html) gives an overview of the range of considerations needed to be taken into account when registering a trademark.

How much?

A trademark must be registered in association with specific products and/or services.  Pursuant to the legislation, such products and/or services need to be “classified” under an international classification system: the Nice Classification. For example, most types of clothes are listed under class 25, whereas board games are listed under class 28.

For the year 2023, the CIPO’s fee for filing an application for registration of a trademark in association with goods or services under just one class is of $347.35. Additional fees of $105.26 are required for any additional class appearing in the application for registration. We invite you to contact a member of our intellectual property team for information on the fees and costs to expect i) for a search on the availability of a trademark and ii) for professional assistance on the registration of a trademark and the management of a trademark portfolio.

Why

There are many benefits for the owner of a registered trademark, such as:

• ​​the exclusive right to use the trademark in association with the goods and/or services mentioned in the registration across Canada;
• deterring third parties from wrongfully copying or using the trademark (registration recorded in a public federal register);
• the possibility of generating income by issuing a licence for the use of the trademark;
• the possibility to market the products associated with the trademark on certain third-party websites (ex: Amazon);
• increasing the value of the company that owns the trademark (the registered trademark is an asset);
• simplifying the process of filing applications for international registration of the trademark;
• benefiting from legal presumptions in opposing proceedings that aim to prevent the registration of a trademark where there is possibility of confusion; and
• benefiting form the right to institute specific proceedings before the courts in order to protect the registered trademark.

About

If you have any questions regarding the content of this article, you are invited to contact the undersigned at the following e-mail address: adam.ansari@cainlamarre.ca.