A Guide to Other Risk Factors During Examination
Establishing a brand in Canada and considering registering a trademark? If so, you might find the process somewhat complex, especially when it comes to the examination phase. In our previous discussions, we’ve covered some of the key terms like Nice Classes, confusion risk, and distinctiveness risk that play a role in the application process. However, these aren't the only things you need to keep in mind.
In this blog post, we will cover some additional factors that are just as crucial and will almost certainly be considered by the Canadian Intellectual Property Office (CIPO) when it reviews your trademark application. We will also discuss the importance of investigating prior use of a trademark, a critical step often overlooked but one that can significantly influence the outcome of your application.
So, let's dive in and unravel more about the review criteria, the examination phase, and the overall registration process.
The Trademark Registration Process
The trademark application process begins when you submit your application. This enters the queue for formalities checking, where CIPO reviews the application for basic compliance with the Trademarks Act and Trademarks Regulations. If CIPO finds any formality defects, they will issue a letter identifying the issues that need to be resolved.
Once you've cleared the formalities check, your application moves on to the Examination Phase. During this phase, a trademark examiner conducts a detailed review of your application, ensuring your proposed trademark meets several key criteria, some of which extend beyond Nice Classes, confusion, and distinctiveness.
Additional Examination Criteria
Apart from the key issues we've already discussed, here are several other factors that could trip up your application during the examination phase:
Names and Last Names as Trademarks: Personal names are usually not allowed to be registered as trademarks unless they are fictitious or have already gained significant fame in the marketplace. As a result, choosing a creative, unique name can be a more strategic choice.
Descriptive Trademarks: If your trademark merely describes a product or service's features, it's unlikely to be registrable. Your trademark should distinguish your brand without directly describing your offerings.
Misleading Trademarks: If your trademark is designed to deceive customers, it won't be registrable. The trademark should truthfully represent your business and its offerings.
Origin Trademarks: Names of places, often used to indicate the origin of goods or services, are generally not allowed as trademarks. This ensures such terms remain available for everyone from that location to use.
Words in Other Languages: If your proposed trademark is the name of a product or service in another language, it may not be registrable, as it might be seen as descriptive. A translation of non-English or non-French words will typically be requested.
'Official' Trademarks: The use of symbols, logos, or badges that are akin to official marks used by governmental bodies or international organizations is generally prohibited. This is to prevent any misleading implications that your goods or services are endorsed or affiliated with these official entities.
Scandalous Trademarks: Trademarks that are scandalous, obscene, or immoral are typically not registrable. This includes any mark that might violate public order or morality, or offend a significant portion of the public.
Consideration of Prior Use
Another crucial element to consider when registering a trademark is the concept of "prior use". This refers to instances where someone has been using a similar or identical trademark before you applied for registration.
In Canada, the individual or business that used the trademark first can have stronger rights to the trademark, even if they haven't registered it.
If, during the examination phase, the CIPO examiner finds evidence of prior use, this could pose a significant risk to your application. Even if your proposed trademark ticks all the other boxes, it might still be opposed by the party with prior use on the grounds that your registration would cause confusion among customers.
What Happens After Examination
Once the examiner has reviewed your application, you'll either receive approval for advertisement in the Trademarks Journal or receive a report detailing any objections. If the latter, you'll have the opportunity to respond to these objections, either by arguing against them or by amending your application to address them. Keep in mind, encountering objections isn't the end of the road. It's a common part of the process. If you can't overcome the objections, the application may be refused, but you also have the right to appeal this decision if you choose.
After overcoming any objections, your application will be approved for advertisement in the Trademarks Journal. This step gives others the chance to oppose your trademark. If no oppositions are filed, or if any oppositions are decided in your favour, your trademark will then proceed to registration.
Concluding Thoughts
The trademark registration process in Canada, while comprehensive, is designed to ensure that every registered trademark is unique, fair, and not misleading to consumers. Having a grasp on potential examination issues, the overall registration process, and the risk of prior use is fundamental to crafting a strong application and successfully navigating any hurdles that may come your way.
With a thorough understanding of these guidelines, careful preparation of your application, and ongoing vigilance after your trademark is registered, you'll be well-equipped to carve out your unique space in the marketplace.
Remember, a strong trademark is more than just a legal requirement – it's the cornerstone of your brand identity and a powerful tool in connecting with your customers.
Have questions?
Get in touch with our trademark legal team today.
