In a competitive market, business names, logos, and product designs can quickly become an asset. That’s where the Trademark Act of Canada comes in. This intellectual property law is designed to help businessowners secure exclusive rights to the unique elements of their business.
For first-time applicants, understanding the Trademark Act of Canada can be intimidating. The process is confusing and choosing a trademark in itself is a frustrating process. This guide is tailored specifically for those new to trademark registration. You’ll learn how the process works, costs, and the common pitfalls to avoid.
What is a trademark?
Trademark Act of Canada says that a trademark can be any of the following:
- word
- group of words
- logo
- design
- sound
- colour
- three-dimensional shape
- scent
- taste
- texture
- mode of packaging
- moving image
Essentially, any sign or combination of signs that distinguishes goods or services from those of others may be registered in Canada under the Trademark Act.
There are two main categories under the Trademark Act of Canada:
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Ordinary trademarks |
Certification marks |
|---|---|
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These are the most common and include names, logos, slogans, or any other sign that identifies the source of goods or services |
These are used to show that certain goods or services meet a defined standard; for instance, it might indicate that a product is organic |
For the purposes of this article, however, discussion will be focused on ordinary trademarks defined under the Trademark Act of Canada. Note though that there are certain limitations to what can be trademarked.
What cannot be trademarked in Canada?
The Trademarks Act of Canada and related regulations set clear boundaries on what cannot be protected through trademark registration. Understanding these restrictions is important to avoid delays for first-time applicants.
Here are some of the main categories of marks that cannot be registered in Canada:
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Names and surnames: Trademarks that are primarily just a person’s name or surname are generally not registrable unless they have become distinctive through extensive use
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Clearly descriptive or deceptively misdescriptive marks: If a mark simply describes the character, quality, function, or origin of the goods or services, it cannot be registered. For example, “Fast Delivery” for a courier service would be considered clearly descriptive
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Place of origin: Marks that only indicate where the goods or services come from, such as “British Columbia Apples” are not registrable. The exception is if the apples are farmed in British Columbia
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Confusingly similar marks: Marks that are confusingly alike such as an existing registered or pending trademark will be refused
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Prohibited marks: Certain marks are outright prohibited by law, such as those that are identical or nearly identical to official marks (e.g., government symbols, crests, or emblems), or those that could be mistaken for such marks
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Plant variety denominations: Trademarks that consist of or like the name of a protected plant variety are not registrable
Distinctiveness as the main factor
The Trademark Act of Canada is primarily grounded on distinctiveness. A mark should set goods or services apart from others in the marketplace. Choosing a unique, imaginative, or coined term is often the best way to be registrable in Canada. Avoiding generic, descriptive, or like existing trademarks will increase chances of trademark registration.
Trademarks vs. other intellectual property
Trademark falls under the category of intellectual property. Others include:
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Patents protect new inventions, such as products, machines, or processes
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Copyrights cover original works of authorship, including books, music, software, and art
Read next: Using patent finder tools to meet patentability requirements in Canada
Registering under the Trademark Act of Canada
Before starting the trademark application process, taking the right preparatory steps can make all the difference. Here’s what every first-time applicant should do before registering a trademark in Canada.
Search the Canadian trademarks database
The first step is to check if the proposed trademark or something similar is already in use. The Canadian Intellectual Property Office (CIPO) maintains a comprehensive Trademarks Database. This includes active and inactive trademarks, official marks, and prohibited marks.
Searching this database allows applicants to identify potential conflicts and avoid applying for a mark that is already registered or pending. When searching, consider all possible variations and spellings of the mark. For example, applying to trademark the name “North Star” means searching for variations like “Star North.”
Here’s a short overview on using the trademarks database:
Search trade names, too
Trade names are often used as trademarks even if they are not formally registered. Searching trade names helps ensure that the proposed trademark does not conflict with businesses operating under the same name. Similarities could result in outright rejection or a protest from existing users.
Consider using an intellectual property lawyer
The process of navigating the Trademark Act of Canada can take a long time, more so if applicants are unsure of the process. The best intellectual property lawyers in Canada can provide valuable guidance at every stage of the process. They can help with the search itself, drafting the application, responding to objections, and more.
While hiring a lawyer is not mandatory, it is often the path of least resistance especially if your mark is likely to face challenges.
Gather all required information
A successful application requires careful attention to detail. It should include:
- a clear representation or description of your trademark
- a list of goods or services to be used with the trademark, grouped and described according to the Nice Classification
- applicant details
- payment for the application fee
How to file: Online vs. Mail
CIPO offers two ways to file your application:
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Online is the fastest and most convenient method. The CIPO online portal guides you through each section, helps prevent common errors, and allows payment by credit card or direct payment.
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Business owners can also submit a paper application along with payment by cheque or postal money order. While this method is available, it may result in longer processing times.
Importance of filing date
The filing date is an important factor in the Canada trademark process. It is the date when all filing requirements are met and officially received by CIPO. This date determines priority over other applicants. If similar marks are filed, the earliest filing date gets priority.
Publication and opposition
If the application passes examination, it is published in the Trademarks Journal. This serves as public notice to everyone with a pending trademark. It can also be the basis of opposition from parties who may be damaged by the application.
If an application is opposed, a notification will be given, and the applicant has time to respond. The process may involve submitting evidence, written arguments, and, in some cases, attending hearings. Consider consulting a trademark agent or legal counsel to help prepare a strong defense.
If no opposition is filed or the opposition is defeated, trademark may be registered. Registration grants exclusive rights to use the mark across Canada for an initial period of 10 years. A certificate of registration is issued to this effect.
How much does it cost to trademark a name in Canada?
A non-refundable base fee must be paid at initial application. This fee covers one class of goods or services, as defined by the Nice Classification system. If the trademark applies to more than one class, an additional fee is paid for each extra class.
|
|
2025 |
2026 |
|---|---|---|
|
First class of goods |
$478.15 |
$491.06 |
|
Each additional class of goods |
$145.12 |
$149.04 |
|
Renewal fee for first class of goods |
$579.42 |
$595.06 |
|
Renewal fee for additional class |
$180.61 |
$185.49 |
Other fees for trademark registration must be paid in case of opposition or application to extend. While it seems expensive, investing in proper trademark registration is a smart move to protect branding in the long term.
Read next: Steps on how to trademark a name in Canada
Legislative changes in the Trademark Act of Canada
Significant amendments to the Trademarks Act and Trademarks Act Regulations came into force on April 1, 2025. These changes introduced procedures and powers that directly affect first-time applicants.
One of the most important changes is the expanded authority of the Registrar of Trademarks. As of April 1, 2025, the Registrar can remove official marks from the Canadian Trademarks Register if the owner is no longer a public authority or if the entity no longer exists. The Registrar can also initiate a review of an entity’s public authority status.
The amendments also introduce procedural tools in case of opposition:
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The Board can now issue confidentiality orders to protect sensitive information during opposition or cancellation proceedings.
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The Board now has the power to order a party to pay cost awards in certain circumstances, such as unreasonable conduct or late withdrawal of a hearing request.
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The board can also designate proceedings as “case-managed,” so that there are more oversight and resolution of complex or contentious disputes.
Additional Resources for First-Time Trademark Applicants
There are several trusted resources and professionals available to help you understand your rights and responsibilities under Canadian intellectual property law.
- Canadian Intellectual Property Office (CIPO) as the primary authority for intellectual property
- intellectual property lawyer for more complex trademark strategies
- cross-border lawyers in case of trademark registration for foreign entities already holding trademarks in other countries
- CIPO’s trademark guide
- goods and services manual
- trademarks database
By using these resources businesses are better equipped to complete their trademark application for protection under Canadian intellectual property law.
Getting started
The Trademark Act of Canada is a reliable framework that lets owners protect the unique identity of their business. For first-time applicants, the process may seem complex, but careful preparation and attention to detail will pay off.
Stay informed about the latest developments in Canadian trademark law with our legal FAQ page!
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