Canadian Trade-mark Law


A trade-mark is a word (or words), a design, or a combination of both, used to identify the products or services of one person or organization and to distinguish these products or services from those of others in the marketplace.

Trade-marks not only represent the actual products or services, but also the reputation of the producer. Trade-marks are valuable intellectual property that can strongly define a producer’s image and quality.

A registered trade-mark will provide you with exclusive rights to the use of your trade-mark across Canada in association with your registered products and services.

Trade Name vs. Trade-mark

A trade name is the name under which you conduct your business. A trade name can be registered under the Trade-marks Act only if it is also used as a trade-mark, that is, if it is used to identify products or services.

The Trade-marks Register is the official record of all trade-marks that have been formally applied for and registered in Canada. The Office of the Registrar of Trade-marks is the government body that maintains and updates the Register.

What is the Process of a Trade-mark Application in Canada?

Steps:

There are six (6) major stages in the application procedure:

  1. Filing – Formalities
  2. Examination
  3. Approval
  4. Advertisement
  5. Allowance
  6. Registration

 

1.  Filing – Formalities

If your newly-filed application is in good order, complete, and if you have included the correct fee ($250 if submitted online or $300 in any other case), your trade-mark application will be assigned an official filing date and an application number.

Your application will be entered into the Canadian Trade-marks Database as well as other databases maintained by external companies. You will receive a formal Filing Acknowledgement and a proof sheet listing the information included in your application. If your application is correct and complete, the acknowledgement and proof sheet will be mailed to you within approximately two weeks after your application is received.

2.  Examination

At this time, your trade-mark application is thoroughly reviewed and a search of the Registrar’s records is conducted to determine that your mark does not conflict with any other mark on record. If there are any objections to or deficiencies in the application, an Examiner’s Report will be issued calling on the applicant to rectify the deficiencies, or speak to the objections. An Examiner’s Report establishes time limits by which a response must be filed. The issuance of Examiner’s Reports and responses thereto can extend the overall duration of a trade-mark application procedure by many months.

3.  Approval

Once the Trade-marks Office’s objections have successfully been overcome, you will be sent a formal Notice of Approval.

The applicant will be asked to carefully review the Notice of Approval and advise if there are any inconsistencies. If no other amendments are required, the application will be scheduled for advertisement as it presently stands.

4.  Advertisement

After your trade-mark application is approved, it will be published in one issue of the Canadian Trade-marks Journal. Within two months of being advertised, others can oppose your application, which will then be removed from the normal processing cycle until the opposition has been resolved. If an application is opposed, the normal time limits are set aside and special provisions governing opposition procedures come into play.

5.  Allowance

If there is no opposition, or if an opposition has been decided in your favour, your application will be allowed and the Office of the Registrar will not consider any further challenges. In the case of an application based upon use in Canada, or upon a foreign registration, the only remaining formal requirement is the payment of the registration fee. In the case of a proposed-use trade-mark application, in addition to the registration fee, a Declaration must be filed stating that use of the trade-mark, in association with the wares or services applied for in the application, has commenced in Canada.

6.  Registration

Once the formalities stipulated by the Notice of Allowance have been met, the application proceeds to registration. A registration number and date are awarded by the Registrar and the Certificate of Registration is issued. The registration of a trade-mark is valid for 15 years from the date of registration and is renewable indefinitely for further 15-year periods.

Next Steps?

I suggest a quick discussion to further explain the process and outline your options. Appointments are available in the evenings and on the weekends. They can be booked with the online request form. You may also speak to me now through the Live Chat feature or by e-mail at faizel@fbjlegal.com

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