How to Trademark a Name in Canada: A Step-by-Step Guide to Protecting Your Brand

In the competitive world of business, your brand's name is one of your most valuable assets. A unique and recognizable name can help you stand out from the crowd and build a strong reputation. To protect your brand and secure exclusive rights to your name, it's essential to register it as a trademark.

In this blog post, we will walk you through the process of how to trademark a name in Canada, helping you successfully register and protect your brand's identity.

The Canadian Trademark Process

Step 1: Evaluate Your Trademark for Legal Issues in Canada

Before you can trademark a name in Canada, it's crucial to ensure that it's available and free from potential conflicts. First, consider whether your name complies with Canada’s trademark requirements. There are a few categories of words and symbols that cannot be trademarked, such as:

• Names and Last Names as Trademarks – Trademarking a person's name is usually not allowed, except for famous names in rare cases. Avoid using names as trademarks.

• Descriptive Trademarks – Words or phrases that describe a product or service's feature cannot be trademarked. Unique branding is essential, so avoid using descriptive names.

• Misleading Trademarks – Trademarks that deceive customers, such as using "Wood Tables" for a plastic table collection, cannot be registered.

• Origin Trademarks – Trademarking names of places is not allowed, as they aren't unique. Terms describing a product's origin should be available for everyone from that location.

• Descriptive Words in Other 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 from the respective organization.

• Scandalous Trademarks – Scandalous, obscene, or immoral trademarks cannot typically be registered.

If you’re satisfied your name can, in fact, be registered in Canada, the next step is to perform a trademark search.

Step 2: Conduct a Thorough Trademark Name Search

To do a proper search, you should search the Canadian Trademarks Database for identical and similar trademarks that could be considered confusingly similar to the name you wish to trademark. When you’re searching for confusingly similar marks, here are a few criteria to help you evaluate whether an existing mark is similar to yours:

• Consider whether your brand name and the existing registration suggest a similar idea

• Consider whether your brand name and the existing registration sound the same

• Consider whether your brand name and registration would appear in similar stores, shopping areas, or the same aisle

When performing a search, assistance from a trademark expert can be extremely helpful. The search process can be complex, as it requires extensive trademark knowledge. Additionally, working with a legal partner who specializes in trademark law can help guide you through the search process, identifying any potential issues and saving you from wasting significant amounts of money and time in the future.

You can also learn more about how to conduct a proper search on our blog, where we’ve written about how to complete a Canadian trademark search.

Step 3: Determine the Appropriate Goods and Services for Trademarking a Name in Canada

When trademarking a name in Canada, you'll need to specify the goods and services associated with your brand. This is crucial, as your trademark protection will only apply to the goods and services listed in your application. To ensure comprehensive protection, carefully consider the full range of products and services your brand will offer, both now and in the future.

Choosing the right goods and services can also significantly impact the timeline for processing your trademark application. Using preapproved terms to build your trademark application can mean your trademark will be approved years sooner.

Having expert guidance in determining the appropriate goods and services for your trademark application can be invaluable. An experienced legal partner with a deep understanding of the Canadian trademark system can help you navigate this process, ensuring you get the best service available.

Step 4: Prepare and File Your Trademark Application in Canada

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 CIPO. 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:

• Applicant Information

• Trademark Representation

• Goods and Services

• The Appropriate Filing Fee

When submitting your application, ensure that all information is accurate and complete. Errors or omissions can lead to delays in processing or even refusal of your application. It's important to review your application thoroughly, ensuring that it complies with all requirements and accurately represents your brand and its associated goods and services.

You can submit your application online through CIPO's online filing system or by mail. Keep in mind that online submissions often have faster processing times and allow for easier communication with CIPO regarding your application.

Step 5: Respond to CIPO's Examiner Reports

After you've filed your trademark application in Canada, it will undergo an examination by a CIPO trademark examiner. This stage is crucial, as 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. Here are some aspects to consider when responding to CIPO's examination:

• Response Timeframe

• Amending Your Application

• Providing Supporting Evidence

• Legal Arguments

Overall, this step of the trademark application process requires a thorough understanding of the legal requirements for a trademark in Canada and the ability to address any concerns raised by the examiner effectively. By responding promptly and appropriately to the examiner's report, you can improve your chances of a successful examination and ultimately secure the exclusive rights to your brand's name in Canada.

Step 6: Publication and Opposition

If your application meets all requirements and passes the examination stage, it will be published in the Canadian Trademarks Journal. This publication serves as a notice to the public and provides an opportunity for third parties to oppose your trademark application.

If no opposition is filed within two months of publishing, or if any opposition is resolved in your favour, your name will become officially registered as a trademark in Canada.

Step 7: Registration and Renewal

Once your trademark is registered, you'll receive a certificate of registration from CIPO. Your trademark protection will be valid for 10 years from the date of registration, and it can be renewed indefinitely in 10-year increments, provided you continue to use the trademark in association with the goods and services listed in your registration and pay the appropriate renewal fees.

Keep in mind that it's your responsibility to maintain your trademark registration by filing renewals and ensuring your trademark remains in use. Failure to do so can result in the cancellation of your trademark registration.

You can learn more about how to renewing a trademark registration on our blog, where we’ve written about how long a trademark lasts in Canada.

In Conclusion: How to Trademark a Name in Canada

Trademarking a name in Canada is a critical step in protecting your brand and securing the exclusive rights to your business name. The key to a successful trademark registration lies in thorough research, accurate application preparation, and proactive maintenance of your registration. By investing the time and effort into securing your trademark, you can build a strong foundation for your brand and enjoy the peace of mind that comes with comprehensive trademark protection. 

Partnering with a knowledgeable legal partner who specializes in trademark law can make the trademark registration process more manageable and ensure that you've covered all necessary steps. With your trademark secured, you can build a strong and recognizable identity that sets your business apart in the competitive marketplace and lays the foundation for long-term growth and success.

Ready to trademark your name in Canada?

Get in touch with our trademark legal team today.