How to Register a Trademark in Canada: A Step-by-Step Guide
Protecting your brand is a crucial aspect of running a successful business. That's why, if you’re operating in Canada, it's incredibly important to register your trademarks.
Registering a trademark is the most effective way to safeguard your brand identity. It provides you with the legal protection you need to prevent others from copying your brand and stealing your business.
To help you better understand what it takes to protect your brand, this blog post provides a step-by-step guide to registering a trademark in Canada.
Registering Your Trademark In Canada
Step 1: Determine if Your Mark is Eligible for Trademark Protection
Before diving into the registration process, it's essential to determine whether your mark is eligible for trademark protection. In Canada, a trademark can be a word, phrase, logo, design, or combination of these elements. But you can't trademark any word or design of your choosing – some are not eligible for any sort of trademark protection
Examples of trademarks that are not registrable include:
Names as Trademarks: Trademarking a person's name is usually not allowed, except for famous names in rare cases.
Descriptive Trademarks: Words or phrases that clearly describe a product or service's feature cannot be trademarked.
Misleading Trademarks: Trademarks that deceive customers cannot be registered.
Origin Trademarks: Trademarking names of places is not allowed because everyone should be allowed to use place names.
Descriptive Trademarks in Foreign Languages: Trademarks cannot be registered if they are the names of products or services in another language (e.g., "gelato" for an ice cream business).
'Official' Trademarks: Trademarks resembling official marks, such as government symbols or military badges, are not allowed without permission.
Scandalous Trademarks: Scandalous, obscene, or immoral trademarks cannot typically be registered.
Often, the most difficult category to avoid is "descriptive trademarks." After all, it's very convenient to brand your products and services in a way that tells consumers what you're offering.
If you're concerned your trademark might fall into one of the categories above, keep reading! Often, professional help (from trademark lawyers) can help overcome these obstacles.
Step 2: Conduct a Comprehensive Trademark Search
Once you're satisfied your trademark is capable of registration, conducting a comprehensive trademark search is the next crucial step.
In Canada, you can perform a basic trademark search for free by searching the Canadian Trademark Office's Trademark Database.
To do a proper search, you should review the Canadian trademark register for identical and similar trademarks. You are not allowed to register a trademark that could be considered confusingly similar to a trademark that already exists.
When you're searching for confusingly similar marks, here are a few criteria to help you evaluate whether an existing trademark is similar to yours:
Did you find an existing trademark that suggests a similar idea to yours?
Did you find an existing trademark that sounds the same as yours?
Did you find an existing trademark that appears the same as yours?
Did you find an existing trademark that would appear in similar stores, shopping areas, or the same aisle and your products and services?
Determining whether an existing trademark is confusingly similar to yours is no easy task. There are a few more considerations than those listed above, and it's often best to get professional help with your trademark searches. If you try registering a trademark that's confusingly similar to an existing mark, your application may be rejected – and you won't be getting a refund.
Step 3: Determine the Appropriate Goods and Services Description
When filing a trademark in Canada, you must specify the goods and services you plan to associate with your trademark. This is a critically important step because – if you do successfully register your trademark – your trademark protection will only apply to the goods and services listed in your application.
Additionally, your goods and services description will determine the amount of government fees you must pay when submitting your application, and the terms you use in your description can significantly impact the timeline for processing your trademark application.
Using unnecessary terms can increase the cost of your trademark application by hundreds of dollars and slow your registration's progress by several years.
Step 4: Prepare Your Application
Once you've conducted a trademark search and determined the appropriate goods and services, it's time to prepare and file your trademark application with the Canadian Intellectual Property Office.
This step involves several crucial components that must be accurately addressed to ensure a smooth application process and prevent potential delays or refusals.
Generally, your application must include the following:
The applicant's name and address.
A clear representation of the trademark you wish to register.
A detailed description of the goods or services associated with the trademark, organized according to the Nice Classification system.
Depending on the type of trademark you plan to register, you may need to provide further information in your application.
When submitting your application, it's crucial to ensure that all information is accurate and complete. Errors or omissions can lead to delays in processing or even refusal of your application. Additionally, correcting a mistake after filing will sometimes require refiling your application – which means more delays and government fees.
Step 5: Submit Your Application and Pay the Filing Fee
Once your application is complete, you can submit it to the Canadian Intellectual Property Office either electronically (through their online filing system) or by mail.
Your filing fee will be based on your application's goods and services description.
Goods and services are divided into categories, called Nice Classes, and each new category associated with your application increases the filing fee.
In 2023, the filing fee for a Canadian trademark application is $347.35 for the first Nice Class (i.e. category) of goods and services. For each additional class, the filing fee will increase by $105.26.
Step 6: Examination of Your Application
After you've filed your trademark application in Canada, it will be examined by an examiner from the Canadian Intellectual Property Office. The examiner will carefully review your application to ensure it meets all legal requirements for a trademark and doesn't conflict with any existing trademarks.
If the examiner identifies any issues or objections, they will issue a report outlining their concerns. Nevertheless, you will have an opportunity to respond to the examiner's concerns by making necessary amendments to your application or providing additional information.
Responding promptly and appropriately to an examiner's report can improve your chances of a successful examination and ultimately secure exclusive rights to your brand's name in Canada. If your response does not satisfy the examiner's concerns, your application may be rejected.
Step 7: Approval and Publication
If your application meets all requirements and passes the examination stage, it will be published in the Canadian Trademarks Journal. Publishing your trademark in the Canadian Trademarks Journal gives others the opportunity to oppose your trademark application.
If no opposition is filed within two months of publishing, your trademark will become officially registered in Canada.
Alternatively, if your trademark is opposed, you must address and overcome the opposition to receive your registration. The opposition process often involves filing lengthy legal arguments and evidence, and it's usually best to get assistance from a trademark lawyer.
Step 8: Registration and Issuance of Certificate
After successfully surviving the opposition phase, you are all set!
You will receive a Certificate of Registration from the Canadian Intellectual Property Office, which provides legal proof that you own your trademark. Your registration will be valid for a period of 10 years.
You can learn more about the renewal process in our blog post titled How Long Does a Trademark Last in Canada?
Conclusion
Overall, registering a trademark in Canada is a crucial step in protecting your brand. It is the most effective way to safeguard your brand identity, helping you build a long-lasting, successful business.
Although the process may seem straightforward, certain steps can be complex and time-consuming. That's why you should consider enlisting the help of a professional, like a trademark lawyer. Trademark lawyers can make the process smoother, and they can increase your chances of success by up to 31%.
Ready to register your trademark in Canada?
Get in touch with our trademark legal team today.
