Being able to register a trademark in Canada is an important step in protecting business interests. Trademarks safeguard a unique name, logo, or slogan so that a brand stands out in a crowded marketplace. Approached properly, a trademark can have actual monetary value for a business.
Anyone offering goods or services should consider registering a trademark to secure their brand’s reputation. Registration also prevents copycats while giving owners the ability to enforce rights based on that trademark. Ultimately, a registered trademark is an investment in a business’s long-term success and credibility.
Trademarks Act in Canada
Trademarks are defined under the Trademarks Act. Here, trademarks are a sign or combination of signs used to distinguish goods or services from others. After some years, a trademark can also represent the reputation and reliability of the business behind it. This makes trademarks a key form of intellectual property.
To illustrate, the Apple trademark carries an excellent reputation in the tech space. Any product with the Apple logo is viewed as a product of Apple and is presumed to meet company standards. If the Apple trademark is slapped on another product and this product malfunctions, it would be Apple who sustains the damaged reputation.
Unsurprisingly, numerous organizations make sure to register trademark in Canada and other countries to protect their brand. Some companies with trademarks include Google, Microsoft, Nike, Disney, Coca-Cola, Toyota, and Tesla. The office concerned is the Canadian Intellectual Property Office (CIPO).
Trademark versus trade name
Knowledge of the difference between a trademark and a trade name is essential. A trade name is the government name of the business such as “Kalua Kofiklic Ltd.” Note that, “trade name” is written as two separate words because this is the name used by the business for “trade”.
A trade name may be a trademark if it is used to identify and promote your goods or services. For example, if your products are packaged under the name “Kalua Kofiklic Ltd.,” you can seek to register it as a trademark. However, if your product is branded and advertised as “Aurora Roast,” then “Kalua Kofiklic Ltd.” is only your business name.
Different kinds of trademark
There are several types of trademarks in Canada. There’s an ordinary trademark and certification marks.
An ordinary trademark can include any of the following:
- words
- designs
- tastes
- textures
- moving images
- packaging styles
- holograms
- sounds
- scents
- three-dimensional shapes
- colours
- any combination of these
Certification marks are another type. They are used by many businesses to show that goods or services meet a defined standard. An example is the Woolmark design on clothing or the Good Housekeeping Seal of Approval.
What qualifies as a trademark?
To qualify as a trademark, the sign must be used to differentiate your goods or services from others in the marketplace. Not everything can be registered: names and surnames, clearly descriptive marks, and marks that are confusing with existing trademarks are generally not registrable.
Ultimately, a trademark is any sign that helps consumers recognize your goods or services and links them to your reputation and quality.
What cannot be registered as a trademark in Canada?
Not everything can be registered as a trademark. Here are trademarks that cannot be registered:
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Names and surnames: You generally cannot register a trademark that is primarily just a person’s name or surname, unless it has become distinctive through use
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Clearly descriptive or deceptively misdescriptive marks: Those that simply describe the goods or services
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Place of origin: Trademarks that indicate the geographic origin of goods or services are not allowed. The exception is if the product actually comes from that place
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Words in other languages: If the word in another language is clearly descriptive or misdescriptive of the goods or services, it cannot be registered
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Confusing marks that are identical or confusingly similar to a registered or pending trademark
Here’s a video explaining confusing marks in trademarks.
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Prohibited marks that are identical to, or likely to be mistaken for, prohibited marks, such as official government symbols, flags, or emblems, are not registrable
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Generic terms: words that have become generic and are commonly used to describe a type of product or service
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Scandalous, obscene, or immoral marks
A complete list of unregistrable trademarks is available in Canada’s official webpage. Understanding what qualifies as a trademark and what does not is the first step when trying to register trademark in Canada.
Who can register trademark in Canada?
Anyone who qualifies as a “person” under the Trademarks Act can apply to register a trademark in Canada. This includes:
- individuals
- partnerships
- trade unions
- associations
- joint ventures
- corporations
Two or more people can also apply together.
To be entitled to registration, the applicant must either be using or plan to use the trademark in association with goods or services in Canada. Both Canadian and foreign applicants are eligible. However, foreign applicants not living in Canada must appoint a registered trademark agent to act on their behalf.
Here’s a helpful video talking about the cost to register trademark in Canada.
Period of effectivity for registering trademark in Canada
Once you register trademark in Canada, you have the benefit of protection for 10 years from the date of registration. Unlike patents that are not subject to renewal, trademarks can be renewed every 10 years. Of course, this is subject to a renewal fee. Failure to pay can lead to the loss of trademark rights.
How long does it take to get a trademark registered in Canada?
The time it takes to register trademark in Canada depends on several steps in the application process. After you file your application and pay the required fee, authorities will review it for completeness and assign a filing date. Any missing information will cause a delay as the authorities confirm with the applicant first.
Once the application is complete, it will be examined to ensure it meets all requirements under the Trademarks Act. If there are no objections or oppositions, the trademark can move forward to registration. The process can take anywhere from 24 months or longer, depending on the complexity of the application.
Common pitfalls when registering trademarks
The easiest way to register trademarks in Canada is with the help of a lawyer. However, ease of doing business is just one of the benefits of obtaining legal help. The fact is that lawyers can also help avoid pitfalls common to DIY trademark registration. Here are just some of the common errors associated with registration:
Incomplete or incorrect applications
Missing information, errors in the applicant’s name, or unclear representations of the trademark can result in the Registrar contacting you for corrections or, worse, abandoning your application if you fail to respond in time. Lawyers ensure your application is complete, accurate, and meets all technical requirements from the start.
Choosing unregistrable trademarks
Applicants sometimes try to register marks that are clearly descriptive, confusingly like existing trademarks, or prohibited under the Trademarks Act. The best intellectual property lawyers in Canada can help assess whether the proposed mark meets the distinctive requirements set by law.
Failing to do a search of existing trademarks
Skipping a thorough search of the Canadian Trademarks Database can lead to infringement issues. Lawyers and agents conduct comprehensive searches to identify potential conflicts before filing.
Poor description of goods and services
Using vague or overly broad terms or failing to group goods and services can result in objections or limit your protection. Lawyers help you draft clear, specific descriptions that comply with the Trademarks Act and maximize your trademark’s coverage.
Not monitoring deadlines
Missing deadlines for responses, renewals, or payment of fees can lead to your application being abandoned. A lawyer or agent will track all deadlines and correspond with the government on your behalf. This reduces the risk of losing rights due to administrative oversight.
Not policing or enforcing trademark
After registration, some owners fail to monitor for infringement of their trademark. This can weaken or even cause loss of rights. Legal professionals can help you set up monitoring systems and take timely action against infringers.
A registered trademark agent or lawyer brings expertise in Canadian trademark law. They can:
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advise on trademark selection and registrability; this helps ensure that the first application gets approval, preventing the payment of multiple application fees
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conduct proper searches and risk assessments; this helps avoid possible infringement lawsuits in case of confusingly similar trademarks
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draft and file applications correctly
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respond to objections and oppositions so that the application process can proceed smoothly
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monitor and enforce your rights after registration
Ultimately, working with a lawyer or registered trademark agent helps avoid common pitfalls. It also speeds up the registration process and protects a brand’s legal rights in Canada.
Next step: protecting your brand
Register a trademark in Canada to protect your brand and build trust with your customers. By understanding the process and avoiding common mistakes, business owners can secure exclusive rights to their trademark and strengthen business’s reputation in the marketplace.
If you have more questions about trademarks or need guidance on specific situations, visit our Legal FAQs page for clear answers and practical advice on trademark law in Canada.
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