Trademark Registration in Canada According to Canadian law, a trademark is a sign or a combination of signs that are used or proposed to be used by a person to distinguish his/her goods and/or service from those of others. A registered trademark is a way to protect the corporate image of a business. Trademark registration vests in its holder,a legal title similar to that of a title deed that vests the right ina property. Types of trademarks in Canada The registered trademarks in Canada are classified into the following two types: Ordinary Trademarks Ordinary trademarks in Canada can be designs, words, textures, tastes, modes of packaging, moving images, sounds, holograms, scents, sounds, colours, 3D images or a combination of all these that can be used to distinguish the services and goods of one person or an organization from that of others. Certification Trademarks A certification mark is assigned to a person or an organization with a view to indicating that the services or goods sold by such an organization meet a defined standard. It must be remembered that trademark registration can be cancelled if someone else in Canada has previously made use of a similar trade name or trademark in the past. Competent authority for trademark registration in Canada The Canadian Intellectual Property Office (CIPO) is a special operating agency of Canada for the development of innovation, science and economic development. It delivers IP services in Canada and educates Canadians on how to use IP effectively.It accepts trademark registration applications through online mode, mail and fax. Benefits of trade mark registration in Canada If you hold a trademark, it adds tremendous value to your business. It allows the customers to identify your products from a variety of similar products and gives impetus toforge customer loyalty. Having a registered trademark not only creates a significant asset for the company but also allows the company to monetize itfurther. Following are the benefits of trademark registration in Canada: It gives trademark holder protection across Canada for 10 straight years. It gives the trademark holder exclusive right of use over the trademark across Canada. It enhances the capacity of the trademark holder to enforce the trademark in Canada. It creates an asset for your company on the balance sheet. Allows the ability to license trademarks across Canada. It also allows the trademark holder to initiate domain name ownership disputes and register a complaint at WIPO. Helps in the monitoring of counterfeit products at the Canadian border. It gives public notice of your ownership via the Register ofTrademarks. Eligibility to Register Trademark in Canada In Canada, an applicant for trademark registration can be either an individual, trade union, partnership, association, corporation or joint venture. The applicant has the option to file a trademark application jointly where two or more persons are involved. What cannot be trademarked in Canada According to the Trademarks Act of Canada, everything can be trademarked except for the following marks that cannot be registered as trademarks: Names and Surnames: A trademark cannot be registered if it is just a name or surname and nothing beyond. However, if the applicant can prove that its goods or services have become so well known that they have acquired a second meaning in the minds of the public, the trademark with such a name can be registered; Clearly descriptive marks: If the trademark describes the qualities or characteristics of your services or goods, then it cannot be registered. For example: you cannot use the word ‘creamy’ for ice cream as it is a descriptive term for ice cream and prevents others from using the word as you would then have a monopoly over the name. However, if you can prove that your goods or/and services have become so popular with the characteristic name that people think only about your services or goodswhen they hear the characteristic name, then you can register a word that indicates characteristic as a trademark; Deceptively misdescriptive marks: Those marks that are deceptively misleading cannot be registered. For instance, the word “cane sugar” cannot be used for candy sweetened with artificial sweetener; Place of origin: A trademark cannot be registered if it describes the geographical location where such services or goods come from. For example: the word “Italy” cannot be used with lasagna. Further, a mark cannot be registered if it misleads the public into believing that certain services or goods come from a certain place when actually they do not. For example: a trademark cannot be used such as “Paris Fashions” or “Denmark Furniture”; Words in other languages: A trademark cannot be registered that is a name for goods or services in another language associated with your trademark. For example, the word “gelato” cannot be used in connection with frozen confections as gelato in Italian means “ice cream”; Marks that cause confusion with the registered or pending trademarks: Marks that are confusingly similar to an already registered trademark or to a previously filed application which is pending for registration cannot be trademarked. If the mark looks or sounds similar and suggests the same ideas it will be refused. It will also be refused if the trademarks are used to market similar services or goods. Trademarks that are either identical to or mistaken for a prohibited mark: A trademark cannot be registered if it is identical or similar to certain official marks unless the organization that controls the mark permits its trademark to be used. The official marks include the following: Official designs of the government Coats of the arms of the royal family, crests and badges such as letters of RCMP and the Canadian Armed Forces Emblems of the red crescent, the red cross and the United Nations Flags, symbols and armorial beatings of other countries Symbols of municipalities, provinces and public institutions. If the subject matter is obscene, scandalous or immoral, then a trademark cannot be registered. Racial slurs, profane language and obscene visuals cannot be included in a trademark. Further, the portraits and signatures of living persons or people who have died in the past 30 years cannot be trademarked. Plant variety denomination: If a trademark consists of a plant variety denomination or a mark so nearly resembles the plant variety denomination that the public is likely to be mistaken by the public and where the application covers a plant variety or another variety of the same species. Geographical origin of the services and goods: If a mark reflects the geographical origin of a spirit, wine, or agricultural product or food unless these goods actually originated from that geographical region, then it cannot be registered. You cannot register a trademark “Saigon wine” if the wine production is being done in Quebec. Prerequisites before filing the Trademark registration application in Canada Before making the application for trademark registration in Canada, the following prerequisites must be followed before making the statement: Searching the Canadian Trademarks Database: In the first step, you should make a preliminary search of the existing trademarks before making the application as it may prevent you from applying for an existing trademark. Search the trademarks through different versions of a trademark. You should even check all the possible spellings in French while searching the database for a possible trademark. Searching trade names: You should also search for trade names because usually, trade names are also used as trademarks irrespective of the fact whether they are registered or not. Hiring of a trademark consulting agent: you should also consider the option of hiring a registered trademark agent to file your application and representing you in case of prosecution proceedings. Procedure of filing Trademark registration applicationin Canada Filing a Trademark application in Canada is a simple process which can be done in the following simple steps: Preparation of the trademark application Representation or Description of the trademark Pay the applicable fee File the application and obtain the filing date Examination of the Trademark Abandonment of the mark Opposition proceedings Section 45 proceedings Preparation of the trademark application - Every trademark registration application should consist of the following: The applicant should provide the name and mailing address The application should contain a description or representation or both of the trademark A statement in the specific and ordinary commercial terms of the goods and services associated with the trademark A statement about the services and goods grouped together according to the NICE classification The prescribed application fee Any other requirements specific to the type of trademark to be registered A separate application has to be filed for every trademark to be registered. However, under the same trademark, more than one good and service can be registered. Representation or Description of the trademark - The trademark application should include a description or a representation or both for the trademark for which it is being sought for registration. The representation contains more than one view of the trademark if multiple views are necessary to define the trademark. If the trademark has colours, then representations should be made in colour along with a description of the colours that appear in the trademark. In case the trademark contains a sound and moving image, an electronic representation along with a description is required. It is advised by professionals at Enterslice that you should register the trademark in the same way you want to use it as changing the colour may result in expungement of the trademark. Pay the applicable fee - The applicable fee should be paid i.e. the base fee for each class of goods or services and the additional fee for every additional class of services or goods. The mode of payment can be either a credit card, postal money, direct payment or via cheque. Do not make the fee after adding the federal and provincial taxes. Make an application for trade mark registration - The application can be either filed online or can be sent along with the payment via email to the Canadian Intellectual Property Office. Upon receiving the application, the staff at the CIPO reviews the application to check every detail is in order. Once satisfied, CIPO acknowledges the date of receiving the application and grants the filing date which is the date on which the application meets all the filing requirements. This filing date is very important because it helps in determining who is entitled to receive the trademark should there be confusion between the co-pending marks. Examination of the trademarkby the CIPO- Once the application has been received and the filing date has been granted by the CIPO, CIPO: Runs a search in the trademark database to find out any pending or registered trademark that is confusing with your trademark; Examination of the application begins to check whether the trademark can be registered as per the provisions of the Trademarks Act and Regulations. CIPO raises the objections, if there are any, and informs you about any outstanding requirements; The trademark is published in the Trademarks Journal and thereafter chance is given to the public to file an opposition to your application; If no one from the public raises opposition or the decisions over the opposition are decided in your favour, then the trademark is registered in your favour. Abandonment of the mark - If the applicant doesn’t respond to the report of the examiner, then the Registrar can consider your application to be abandoned. Before abandoning the application, the examiner notifies the applicant and gives the applicant enough time to make to correct the particulars of the application. If the applicant fails to respond to the application within the specified time, then the applicant is required to file a new application along with the fee. Renewal of trademark in Canada - The trademark can be renewed in Canada for another term of 10 years on payment of the applicable fee and meet all the requirements of the application. Documents required for Trademark registration in Canada The following documents must be attached at the time of filing an application for the registration of a trademark in Canada: The address and name of the applicant making the application for trademark registration A description and representation of the sign to be registered as a trademark A description and graphical representation of the sign to be registered as a trademark A declaration to the effect that the applicant intends to use the trademark Proof of payment of the prescribed fee, depending on whether the fee has been filed electronically or via other means. Fee for Trade Mark registration in Canada The fee applicable for the registration of a trademark is as follows, if the trademark application is made and the fee paid is done through CIPO’s website: For the first class of services and goods, the applicable fee for registration is 2022 fee: $ 335.93 CAD 2023 fee: $ 347.35 CAD For each additional class of services and goodsto be registered, the fee is 2022 fee: $ 101.80 CAD 2023 fee: $ 105.26 CAD The fee applicable for the registration of a trademark is as follows, if the trademark application is made and the fee paid is done through any other means: For the first class of services and goods, the applicable fee for registration is 2022 fee: $ 437.72 CAD 2023 fee: $ 452.60 CAD For each additional class of services or goods to be registered, the fee is 2022 fee: $ 101.80 CAD 2023 fee: $ 105.26 CAD Fee for Trade Mark Renewal in Canada The fee applicable for the renewal of a trademark is as follows, if the renewal application is made under section 46 of the Trademarks Act and the fee paid is done through CIPO’s website: For the first class of services and goods, the applicable fee for a renewal is 2022 fee: $ 407.18 CAD 2023 fee: $ 421.02 CAD For each additional class of services or goods to be renewed, the fee is 2022 fee: $ 127.50 CAD 2023 fee: $ 131.58 CAD The fee applicable for the renewal of a trademark is as follows, if the renewal application is made under section 46 of the Trademarks Act and the fee paid is done through other means: For the first class of services and goods, the applicable fee for a renewal is 2022 fee: $ 508.98 CAD 2023 fee: $ 526.29 CAD For each additional class of services or goods to be renewed, the fee is 2022 fee: $ 127.50 CAD 2023 fee: $ 131.58 CAD Removal/ Expungement of a trademark in Canada The expungement of a trademark in Canada or removal of the trademark from the Register of Trademarks can occur if the trademark: Loses its distinctiveness; Is abandoned; and Ceases to be used as a trademark.