Expanding overseas? Start by registering a trademark in Canada

Success in business may depend, to a large extent, on message conveyed and image projected. A product or service may be excellent, but if the supplier of the product or service does not stand out, it may be overlooked in favor of a company with a stronger market presence. Trademarks can provide that distinctive identity which differentiates a business' products or services with that of a competitor, whether at home or abroad.

What is a trademark?

A trademark is a word, symbol, design, or any combination used in association with wares (products) or services. It is a useful tool for distinguishing the wares or services of one entity from those of others in the marketplace. A trademark may come to represent not only wares and services, but also the reputation of the owner of such wares and services. As such, trademarks are often considered valuable intellectual property.

Why trademark in Canada?

Registering a trademark in Canada not only allows you to publically claim ownership of your wares (products) and services, but allows the owner to control the use of the trademark within Canada. A registered trademark also provides protection against a third party using the mark as well as prevents others from adopting a confusingly similar trademark.

Are trademarks in the U.S. protected in Canada?

The protection of a registered trademark only extends to the jurisdiction in which it was registered; therefore, if your trademark is registered in the U.S., your trademark would only be protected in the U.S. and not in Canada. In order to protect your trademark in Canada, you would need to apply for a Canadian trademark.

Who can apply for a trademark?

Anyone from outside Canada may apply for a Canadian trademark. However, as a non-resident, it is necessary to appoint a representative for service in Canada who is qualified to receive correspondence from the Trademark Office.

A representative for service does not act in the same manner as a registered trademark agent. While a trademark agent is able to act on behalf of the applicant, a representative for service only serves as a point of correspondence within Canada—from CIPO (Canadian Intellectual Property Office) to your representative for service to you. A registered trademark agent in Canada can also act as your representative for service if you choose to appoint them to act in this capacity.

How does the trademark registration process work?

In Canada, registration of a trademark consists of having the trademark entered on the Trademarks Register of the Trademarks Office within the CIPO, and paying a non-refundable fee. The entire process takes approximately eight to ten months, unless there are opposition proceedings, in which case the process can be much longer.

While it is possible to file an application for registration of a trademark that is not yet in use somewhere in Canada, the trademark must be in use in Canada before actual registration can occur.

It is highly recommended to do a search on the trademark database to make sure that your proposed trademark does not conflict with a similar trademark already registered.

An application for registration of a trademark must include a detailed description, in normal commercial terms, of the wares or services in relation to which the trademark is used. Within a couple of weeks of receiving an application for registration of a trademark, the Trademarks Office will issue a confirmation of receipt of the application.

Within the next few months, the Trademarks Office examiners carry out a search of trademark records for potentially conflicting marks. Should there be no apparent conflict, the examiners will make an initial determination as to the registrability of the trademark, assessing such characteristics as whether the trademark is "clearly descriptive" or "deceptively mis-descriptive." They will also decide whether the description of the wares or services complies with the regulations and is in normal commercial terms. The examiners advise the applicant of any adverse findings.

Once past the conflict search stage and initial determination of ‘registrability,' the trademark information is published in the Trademarks Journal. Any interested party may then make representations to the Trademarks Office, such as filing an opposition against registration of the trademark owing to alleged confusion with an existing mark. Should this happen, opposition proceedings can, if successful, bring the application process to an end or otherwise delay the registration process for 18 months or more.

If the Trademarks Office receives no objection within approximately three months of publication in the Trademarks Journal, the Trademarks Office issues a notice of allowance of the application for registration.

To proceed to the final step of registration, the applicant must pay a fee per trademark within six months of the date of the notice of allowance. Upon receipt of the registration fees, the Trademarks Office will issue a certificate of registration for each duly registered trademark.

How long is my registration good for?

In Canada, registration of a trademark is valid for fifteen years. A trademark registration is renewable every fifteen years for an additional 15 years upon payment of a renewal fee.

For more information about registering a trademark in Canada, visit http://www.legalzoom.ca/.