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What is a trademark, and why do you need one?
What is a trademark?
A trademark is a legal and business tool that allows you to have unique identity in the marketplace. Any special element or “sign” that you use to promote and distinguish your business (and the goods or services you sell) from your competitors can be a trademark. This means a trademark can be:
- a word
- a slogan
- a logo (design)
- a three-dimensional shape
- a moving image
- a hologram
- a colour
- a sound
- a taste
- a scent
- a texture
- a mode of packaging (such as shape and colour)
- the unique positioning of a sign
A trademark can be one, or a combination, of any of the above special elements. For example, you might distinguish your brand with a logo + a slogan or with a three-dimensional shape in a specific colour.
You can also register as a trademark a description that is not typically associated with a good or service (so long as the description is not misleading) or an original coined term that does not have a dictionary definition.
Naturally, there are limitations to the special elements that can be trademarked. Here are some examples of what cannot be registered:
Examples of trademarks include:The CBC’s logo (the one that looks like an exploding pizza).
Molson’s “I am Canadian” slogan.
The Toronto Maple Leafs’ blue maple leaf (a combination trademark: logo + name)
These logos, names, and slogans have become synonymous with brand identity.
What can’t be registered as a trademark?
There are, in fact, a number of signs that cannot be registered as trademarks. Trademarks (“marks”) that are unregistrable include:
- Marks that clearly describe a characteristic or quality of the goods or services (such as words like “cold” for “ice cream” or “lather” for “shampoo”)
- Marks that “deceptively misdescribe” the nature of the goods or services (such as words like “air express” for “bicycle couriers” that could potentially mislead customers)
- Marks that lack inherent distinctiveness (such as common everyday expressions, or laudatory words like “wonderful” or “excellent,” or words or symbols that merely describe or suggest some aspect of the goods or services being sold, like a dog image for “pet food”)
- Marks that describe the place of origin or geographical location where the goods or services come from (such as “Canada” for “bacon” or “maple syrup” or “Montreal fashions” for clothing that is not produced exclusively in Montreal)
- Marks that are primarily names and surnames (like “John Doe”)
- Marks that are the name, in any language, of the goods or services associated with the trademark (like “Chai” for “tea” or “manteau” for “coat”–but “Chai” for “coat” could be registered)
- Marks that are confusingly similar to another pending or registered trademark (like the words “The James Bay Company” for a department store). Trademarks will be considered confusingly similar if they look alike, sound alike, suggest similar ideas, and if they market similar goods or services.
- Marks that are identical or similar to an official mark (unless you have the permission from the organization that controls the mark). An “official mark” is a trademark that has been adopted and used by any public authority in Canada and is afforded special privilege. Official marks include:
- official government designs (including the Canadian flag)
- coats of arms of the Royal Family
- badges and crests such as those of the Canadian Armed Forces and the letters RCMP
- emblems and names of the Red Cross, the Red Crescent, and the United Nations
- armorial bearings (coats of arms), flags and symbols of other countries
- symbols of provinces, municipalities and public institutions
- Marks that resemble “prohibited marks” including:
- racial slurs
- obscene depictions
- profane language
- portraits or signatures of living persons or those who have died in the last thirty years (unless you have formal permission)
- plant-variety denominations
- geographical origin of a wine, spirit, or agricultural product or food unless your goods are from that geographical area
In some cases, it may still be possible to register trademarks that are typically not registrable, if additional criteria is met. For example, you may succeed in registering a trademark that is a name or surname if you can prove that the goods or services have become so well-known under that name or surname that the term has acquired a “second meaning” to the public. Similarly, you may succeed in registering a trademark that is deemed to be descriptive or non-distinctive if you can establish that the trademark has acquired distinctiveness though years of use and public recognition. The specialists at The Trademark Group understand the laws and procedures that govern the successful registration of trademarks, and we will help you select and protect wisely from the outset.
What’s the difference between a trade name and a trademark?
While these terms are easily confused, a trade name is the name an individual or organization uses to conduct their business (it can be the registered business name or the incorporated name), while a trademark is the unique “mark” an individual or organization uses to distinguish their business in the marketplace and to identify their goods or services. Just because you have a trade name, even a registered trade name, does not mean that you have a trademark.
Who can register a trademark?
Any individual, partnership, trade union, association, joint venture, or corporation can file an application to register a trademark. An application may have one or more applicants.
Why should I register my trademark?
Just as a marriage can be registered officially or remain common-law, so can a trademark. In other words, you have legal rights in your trademark as soon as you begin using it, whether or not it is officially registered, and those legal rights increase over time through use and goodwill. However, rights in a common-law trademark are weak in comparison to the rights of a registered trademark. Say, for example, that someone uses your trademark without your permission and you sue them. It can be much harder to prove your case if your trademark is unregistered (common-law). You would be able to bring a “passing off” action against them, but not an infringement claim, and the burden of proof would fall entirely on your shoulders. Also, your rights under common law are restricted to the specific region (Toronto, say, or Sudbury) where you have established a reputation. A trademark registration, in comparison, grants the owner the exclusive right to use the trademark Canada-wide. With a registered trademark, you do not have to bear the burden of proving your ownership of the trademark. A trademark registration constitutes prima facie evidence of: the validity and registration of your mark; your ownership of the mark; and your exclusive right to use the mark in connection with the registered goods or services.
Some more advantages to registering a trademark
- Registered trademark rights are valid and enforceable across Canada, even if your business is restricted to just part of a city or province.
- No one else in Canada can register the same trademark.
- Anyone who tries to adopt a similar trademark can be sued for infringement and subject to all of the remedies available under the Canadian Trademarks Act.
- The longer your trademark has been registered, the more difficult it becomes for third parties to challenge it, so long as you have consistently continued to use it in association with the registered goods or services.
- Licensing your trademark (for example, for franchises) is much easier if it is registered.
- Your first application to register the trademark can give you certain benefits in many other jurisdictions, for example, access to a “priority” (or earlier) filing date.
- Registering your trademark adds to the cultural value of your business. It may well add to its capital value as well if you are seeking investors, because trademark registration is an asset in itself.
- A registered trademark can be sold separately from your business as an asset.
When should I register my trademark?
It is ideal to register your trademark as soon as you begin to affiliate your brand or identity with your unique “sign”—the word, logo, slogan, or other special element, that becomes your trademark. You can even apply to register your trademark before you have actually begun using it. As you begin the registration process, you might discover that someone else is already using a similar or identical trademark. It is better to discover this early on, than several years after investing in and using your trademark and building your brand identity. If you adopt a trademark that someone else has already applied for and is actively using, you risk being sued for trademark infringement. You would then likely have to abandon your trademark and possibly even have to pay damages to the true owner.
How long does the trademark registration process take?
Registering a simple, straightforward trademark generally takes two years.
How long does registration last?
A trademark registration is valid for ten years and is renewable.
Why should I hire a trademark agent?
Registering a trademark is a complicated and time-consuming process. That’s why the Canadian Intellectual Property Office (CIPO) recommends hiring a registered trademark agent. A trademark agent is a specialist in trademark law who knows how the Canadian registration system works. At The Trademark Group, our team of expert lawyers and skilled agents will support you every step of the way. Also, if you are planning to register your trademark in other countries, such as the United States, CIPO strongly advises hiring a trademark agent to act on your behalf, and so do we. An experienced and competent trademark agent can make foreign registration a lot easier and less expensive in the long run. The Trademark Group has an extensive network of agents to assist you in securing rights in your trademark worldwide.
The Trademark Group will:
- Save you time: We’ll monitor all government correspondence on your behalf, leaving you time to run your business, while we ensure that all official requirements related to your trademark application are handled in a timely and accurate manner.
- Save you money: We’ll make sure your application is strong from the get-go. By assisting you with pre-registration strategy, we’ll help you craft a brand identity that is likely to succeed–and a strong trademark, coupled with a properly-prepared trademark application, is key. Weak or unregistrable trademarks will be objected to, so by filing wisely from outset, you can avoid the extra costs associated with overcoming official objections, and/or having to re-brand and re-file.
- Save you angst: Using weak or unregistrable trademarks leaves you vulnerable to legal complications, such as “cease and desist” letters and infringement actions. Instead, we will help you to do it once, and to do it right.
Help! Someone has copied me!
If you have registered a trademark, and someone else has used your sign, symbol, logo or phrase without your consent, you have legal rights. We can help you with dispute resolution and infringement issues.
After you have decided that your trademark rights are being infringed upon, you have two choices:
Many people choose to do nothing upon discovering that their trademark is being infringed upon. We advise against doing nothing, because by sitting back, you could potentially lose rights in your own trademark. Besides, legal action does not necessarily have to be ugly, expensive, or time-consuming.
Pursue legal action
When legal action is warranted, we are here to advise you on the best ways of carrying out basic negotiations. Sometimes, this can involve a friendly phone call, email, or letter from you to the owner of the person or business infringing your trademark right in order to clarify matters of geography or service areas.
Unfortunately, not all infringers will respond to friendly attempts at resolution. In such cases, infringers are likely to respond to legal correspondence. The Trademark Group can prepare and send a cease and desist letter on your behalf. We can also help if you decide you should pursue further legal action in court.
Someone would like to use my trademark—how does that work?
We’ll help you draft and negotiate licence agreements with anyone wanting to use your trademark, so that you are properly paid for the use of your intellectual property.
Someone is trying to register something like my trademark—what do I do?
You or anyone else can look through the Canadian Trademarks Journal, a public document published weekly by the government of Canada. The Trademarks Journal is CIPO’s official publication that lists the details of every trademark application that has been approved for advertisement in Canada. Anyone who believes they will be damaged by the registration of a trademark listed in the Trademarks Journal, has a two-month window to file a Statement of Opposition (or to request an extension of time to do so).
You can use the Trademarks Journal to monitor pending trademark applications that have been approved for registration. We also review it on your behalf. If a newly-approved trademark application rings alarm bells, we can help you file a formal Statement of Opposition that lays out all of the grounds for opposing a potential registrant. We’ll make sure you lay out your case clearly and accurately. The registrant will then have to file a Counter Statement and, if the opposition proceeds, both you and the registrant will be asked to submit evidence and other documents.
Similar to the trademark application process, the stages of trademark opposition take time and can drag on for years at worst. Even after the Trademarks Opposition Board makes its decision, you (or the other party) might choose to appeal the matter at the Federal Court level. It’s best to enlist our help from the start to support you through the opposition process. For the most part, we try to negotiate reasonable settlements, to resolve the issues at hand without costing you a fortune.
How Registering a Trademark Works?
The process of registering your trademark with the Canadian Intellectual Property Office (CIPO) can be complicated and time-consuming. The Trademark Group is here to assist you with every step along the way.
1. Preliminary Search
You’ll begin by completing a questionnaire so we can get to know you and your business. We’ll also talk to you (usually by phone) to help you think through some important questions, such as what distinguishes your trademark from others, and what are some of the potential strengths and weaknesses of your application. Then we’ll conduct what are called preliminary screens of the CIPO Trademarks Register to be sure that no one else has already filed or registered the same trademark. We look for exact matches from the 8 million pending and registered trademarks and trade names. If your trademark matches or resembles an existing trademark too closely, we’ll advise you at this point to consider adopting a different trademark.
2. Comprehensive Search and Opinion
After the preliminary search has been completed and we have provided you with our initial advice about your trademark, if you would like further review and reassurance, we’ll conduct a more extensive search—a comprehensive name search and report—that will include not only exact trademark matches but also similar-looking or similar-sounding trademarks (by using special algorithms) that could potentially impede successful registration. It is important to check for similar trademarks because you need to ensure that you don’t adopt and invest in a mark that might be considered “confusingly similar” to a pre-existing mark.
While it is not a legal requirement, conducting a pre-application search is one of the most important steps and something we strongly advise you to do or have us do for you. Carefully reviewing the Trademarks Register for similar or identical trademarks that have been previously filed or registered ensures “due diligence and good faith” that you’re not infringing upon someone else’s existing trademark rights. If you go ahead and use a mark that legally belongs to someone else, you could be sued for infringement or asked to pay damages. At the very least, you could be asked to stop using the trademark—causing you to lose all the value you’ve built up in customer recognition and goodwill, not to mention expenses like stationery, supplies, and marketing materials. Conducting a pre-application search reduces the risk of wasting time and money by submitting a trademark application that is doomed to fail.
For those who may be launching a larger brand or series of related trademarks, we offer very detailed searches with opinions. These are more expensive, but if you are investing heavily in your brand, it is better in the long run to be as sure in your trademark selection as you can be.
If, after conducting searches, we have found your mark to pose potential conflicts, we will work with you to create a stronger trademark that will result in a stronger application. You will not be charged for additional searches as we work on fine-tuning your trademark.
3. Filing the Application
Once we have determined that there are no apparent conflicts that could lead to your trademark application being rejected, we will begin the application process for you. Filing a trademark application is a complex process. A trademark application must be both accurate and complete in order to meet CIPO’s formal and statutory requirements.
A complete trademark application includes the following information:
- Owner’s name(s) and legal address
- Agent of Record’s name and legal address. This is the chosen representative managing the trademark application on your behalf, if desired.
- The trademark or a digital representation of the trademark (if the mark is a logo, design, or non-conventional mark). Depending on the type of trademark, a description of the trademark may be required (for example, if colour is claimed as a feature of the trademark). Non-conventional trademarks may have other requisites to be considered for registration, such as supplying CIPO with evidence to prove acquired distinctiveness.
- Description of the goods and/or services associated with the trademark, worded according to CIPO standards and grouped according to the 1-45 pre-determined classes of the Nice Classification.
- Priority claim details if applicable. This includes the filing number, date, and jurisdiction of the first-filed application for the identical trademark and substantially the same goods and/or services anywhere in the world.
- Filing fee. The fee is determined by the number of classes of goods and/or services the trademark application falls into.
If you want to register multiple trademarks (such as a logo and a name) you might be able to register them in a combined form, if that’s how you will always use them; but, it is always advisable to protect each element, the logo and the word(s), separately for maximum protection.
After the required information is collected, a trademark application is completed and filed. CIPO will generate an application number and date upon receipt of the application. In approximately one to two weeks after the application is filed, CIPO will issue an official Filing Notice, which summarizes the application details and provides you with an opportunity to review the information for accuracy. If you want to change your application substantively after this point, you may have to file an entirely new trademark application.
After your application is filed, it will sit in the queue until assigned to an examiner for review and assessment based on formal and substantive criteria set out by the laws governing trademarks in Canada. The examiner will issue correspondence to you (or to the Agent of Record on your behalf) if they have any concerns about your application and you will have an opportunity to respond. We will ensure that you are notified of any correspondence received and help you understand what is required to get your application to advance. You need to stay engaged throughout the examination process—if you’re not on top of it (hint, we’ll help you!) your application could go “abandoned.”
The Canadian examination process is a long one, and includes the following steps:
- A search of existing trademark records to crosscheck against your trademark application for similarities or conflicts.
- A formal examination of your application to be sure that it complies with the Trademarks Act and Trademarks Regulations. If the examiner has any objections or identifies any requirements, the examiner will issue an Examiner’s Report that summarizes the examiner’s findings, the actions required by you to meet CIPO’s requirements, and the hard deadline by which you must respond. We will notify you when an Examiner’s Report is received and help you understand the issues raised and how to reslive them. We’ll also assist you in responding to the Examiner’s Report to make sure that your answers satisfy the examiner. If any objections are maintained after the first Examiner’s Report is responded to, the examiner will issue a second (or third) Examiner’s Report, giving you several opportunities to overcome any objections raised or maintained. Ultimately, if the examiner refuses your application during the examination stage, we can help you appeal the refusal with the Federal Court of Canada.
- CIPO will perform a final search to make sure that in the months up to and including examination, no co-pending trademark applications were filed that are deemed confusing with yours. This is called a pre-publication search because it is conducted before your trademark is advertised online in the Canadian Trademarks Journal. You’ll be contacted if CIPO turns up a conflicting mark.
Once your application is found to have satisfied all formal and statutory requirements, CIPO will issue an Approval Notice declaring that the application is slated for advertisement in the Canadian Trademarks Journal. The Trademarks Journal lists all approved trademarks in Canada and is available online for public review. The Approval Notice also summarizes the application details in their finalized form, and should be reviewed for accuracy before the application is advertised.
From the date your trademark application has been advertised, any party that believes it may be negatively impacted by the registration of your trademark has a two-month window in which it can formally oppose. To indicate opposition, the party must file a Statement of Opposition and pay a fee. An extension of time to oppose may also be requested if the party needs more time to consider its position. Likewise, if you want to oppose someone else’s trademark application, we can help support you through the process. The opposition steps are complicated and similar to legal court proceedings. Most opposition cases are resolved through negotiating terms of settlement.
If no opposition was filed against your trademark application (or any opposition was successfully concluded in your favour), your trademark will register. CIPO will issue a Certificate of Registration that lists the official registration number and the registration date. The Certificate of Registration is accompanied by a second document that summarizes the registration details, including the applicant information, the trademark, the list of registered goods and/or services and their classes, and priority claim(s) if any. Your trademark has been entered on the Canadian Trademarks Register and you can now legally use the ® symbol beside the trademark! A trademark registration in Canada is granted for a term of ten years, and may be renewed upon payment of the renewal fees before the registration expiry date.