Trademark FAQ

1. What is a trademark?

A trademark may be one or a combination of words, sounds or designs used to distinguish the goods and services of one person or entity from those of others in the market. Trademarks are valuable intellectual property as they come to represent both the actual goods and services and the reputation of the producer; consumers link trademarks to experiences consumers have with products and/or services used in association with those trademarks. Examples of famous trademarks include TASTE THE RAINBOW®, SUBWAY® and the Apple logo.

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2. What can I not register as a trademark?

  • Words or designs that are confusingly similar with a previously registered trademark or pending trademark
    • Trademark examiners look at various factors when determining whether trademarks are confusing, including whether the trademarks look or sound alike and whether the trademarks are used in association with similar goods or services. For example, if X sells coffee beans under registered trademark PURPLE BIKE, and Y applies for PURPLE TRIKE in association with café services, the public may easily conclude that the goods and services are manufactured and sold by the same company, and may expect that the trademarks are owned by the same entity.
  • Names and surnames:
    • You may not register a trademark that is nothing more than a name or surname, such as John Smith. There are exceptions to this rule: if you can a) prove that the goods or services have become distinctive under the name so that the word has acquired a secondary meaning in the public mind, or b) illustrate that the name or surname has other meaning (as it is the name of a city, or park, or geographic feature, etc.), you may be able to register the name.
  • Clearly descriptive marks or deceptively misdescriptive marks:
    • Words that describe an inherent feature or character of the goods or services (i.e. clearly descriptive words) may not be registered. For example, SALAMI BITES for appetizers consisting of meat and BLUE FENCE RENTALS for portable fence rentals may not be registered.
    • Words that are clearly misleading are also barred from registration. For example, NO CHEMICALS REQUIRED in association with a pesticide laced with chemicals would not pass muster.
  • Words in other languages
    • Words that are the name of the good or service in another language (like "kaas," Dutch for "cheese," or "gelato," Italian for "ice cream") may not be registered.
  • Words that denote a geographical location commonly known to be the place of origin of such goods or services
    • For example, you may not register ITALY in association with lasagna, nor HAVANA in association with Cuban rum. Further, you may not mislead the public into thinking goods or services originate from a certain place when they do not; for example, PARISIAN FASHIONS may not be registered in association with clothing manufactured in Canada.
  • Prohibited marks
    • You may not register a trademark that is similar to certain official marks unless you have consent of the authority in question. Such official designs include official government designs (e.g. the Canadian flag), symbols of provinces, municipalities, and public institutions, and badges and crests such as those of the RCMP, the Red Cross, and the United Nations.

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3. Why should I register my trademark?

Although you acquire some legal rights as soon as you use your trademark in the marketplace (known as "common law" rights), a registered trademark is more powerful than an unregistered trademark. The common law rights associated with an unregistered trademark extend only as far as the regions where you have established a reputation; a registered trademark gives you the exclusive right to use the mark across Canada for 15 years, regardless of where you actually do business. In addition, it is harder to prove ownership of an unregistered trademark versus a registered trademark. Here are some other advantages of a registered trademark:

  • Registered trademarks add value to your business as they are intellectual property assets that may be easily transferred to another entity.
  • Registered trademarks are easily licensed.
  • No one else in Canada can register the same mark.
  • Anyone who tries to adopt a similar trademark in the Canadian marketplace may be sued for infringement with all the remedies under the Trade-marks Act available to you (whereas the owner of an unregistered trademark may only sue in a "passing off" action).

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4. Can I apply to register a trademark that I haven't used yet?

Yes, but you must use the trademark before your trademark will be registered. That is, your application may successfully pass all of the steps to registration, but it will not be registered until the trademark has been used in association with the goods or services listed on the application (see 5.e for more information). This requirement will change under new legislation that is expected to come into force in mid to late 2016.

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5. What are the steps involved in applying for a trademark registration?

  • Search: A wise first step is to conduct a search of the Canadian Intellectual Property Office’s (CIPO) trademarks database to determine whether similar trademarks have been previously registered or applied for. In addition, an internet search may reveal the existence of similar marks in the Canadian marketplace. We often perform initial searches for free, but cannot opine on registrability from these searches. If you want a complete search, we can order and review these (please call us to discuss costs).
  • Apply: An application may be easily filed online. The applicant includes the word or design mark to be applied for, and lists the goods or services it wishes to be associated with the trademark. The applicant must indicate its grounds for using the trademark, such as proposed use (it intends to use the trademark in the near future), use in Canada (the applicant is already using the trademark), or registered and used abroad (the applicant has registered and used the trademark in a country party to an international convention). If the application is completed in good order, CIPO will assign a filing date and application number.
  • Examination: About six months after the application date (give or take a few months), an examiner at CIPO will review the application. Among other things, the examiner i) looks to see if the wording of the statement of goods and services is specific and unambiguous ii) determines if the trademark contravenes any of rules set out above in section 2, and iii) searches the trademark database to see if the trademark conflicts with one already filed or registered. Upon examination, the examiner will come to one of three conclusions:
    • The application is acceptable in all respects. The examiner will send a "Notice of Approval" to the applicant noting that the application is cleared for advertisement (see section d). This outcome is ideal!
    • The application is deficient or incomplete in some minor manner, but will be acceptable once revised within the time frame provided. The examiner will send the applicant or its agent a "Technical Office Action" explaining its concerns. For example, a portion of the statement of goods or services may be ambiguous to the examiner (e.g. "clothing" is too broad; a revised statement may read, "clothing, namely, t-shirts and shorts"). If the examiner is satisfied with the applicant’s response, the application is cleared for advertisement (see section d).
    • The application is barred from registration for substantive reasons, and the examiner will explain her reasoning in a "Substantive Office Action" sent to the applicant or its agent. For example, the examiner may believe that the application is confusingly similar to a previously registered or filed trademark, or that the trademark is clearly descriptive of its related goods/services. The applicant is then given time to provide the examiner with written reasons as to why the examiner’s opinion is incorrect. These submissions usually rely on principles of law derived from previous Trade Mark Opposition Board and Federal Court decisions. If the examiner is not swayed by the applicant’s submissions, the application will be refused. In the event of a refusal, the applicant may appeal to the Federal Court.
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    • About three months after an application has been approved, it is published in an issue of the Trademarks Journal. The Trademarks Journal is published weekly and may be browsed by the public at http://www.ic.gc.ca/opic-cipo/tmj/eng/home.html. Within two months of being advertised, other parties can oppose the application (e.g., because the other party believes the applicant’s trademark is confusingly similar with its previously registered trademark).
    • If the application is opposed, it is removed from the normal processing cycle and the opposition proceedings begin (this is a complex process that goes beyond the scope of this FAQ –contact us for details).
    • If the application goes unopposed, the examiner will send the applicant a "Notice of Allowance."
  • Allowance and Registration
    • If the application was based on prior use in Canada, the application will be allowed for registration quickly after CIPO's $200 registration fee is filed. After payment, the registration certificate will be downloadable within 48 hours, and the applicant may use ® in association with the trademark.
    • If the application was based on proposed use in Canada, the application may not be registered until use has commenced (subject to changes to come into force in the new trademark legislation). If the applicant has used the trademark in association with the goods/services applied for, then the applicant files a "Declaration of Use" (a document signed by the applicant declaring use of the trademark) with the $200 registration fee to complete the registration. If the applicant has used the trademark in association with some but not all of the goods/services applied for, the applicant may either a) register the trademark by filing a Declaration of Use in association with the goods/services the trademark has been used with, or b) wait until use has commenced in association with all listed goods/services before filing the Declaration of Use. Obviously, this is a strategic decision to be made by the applicant in consideration of its business plans.
    • The application will be deemed abandoned if a Declaration of Use is not filed before the later of six months from the date of the Notice of Allowance or three years from the filing date. Extensions may be granted in certain circumstances (contact us for details).

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6. What are the costs associated with registering a trademark?

If the application flies through the process without hindrance, the basic CIPO fees are a $250 filing fee and a $200 registration fee, plus applicable agents’ fees (please contact us for details). There are no CIPO fees associated with filing revised applications or responses to office actions. Other CIPO fees may apply, depending on the circumstances (e.g. there is a $125 CIPO fee for requesting an extension to certain CIPO deadlines).

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7. How long does the entire registration process take?

It varies depending on the complexity of the application and whether any hurdles are encountered during the process. Simple applications usually take 12-18 months to reach registration, but the process may take longer if office actions are received or opposition proceedings are brought.

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8. How long does a trademark registration last?

Registered trademarks are protected for 15 years from the date of registration, with an opportunity to renew the registration for another 15 years for a fee (currently $350). However, under the new legislation this will be reduced to 10-year periods; therefore, it may be a good idea to apply prior to the new legislation coming into force.

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9. Do I need to use a registered trademark agent to apply for a trademark registration?

No, although there are many benefits to using a registered agent. While an agent's fees may add some expense, an agent's experience may prove invaluable at many stages of the process. For one, agents allow you to avoid pitfalls of inexperience (and the time and expense related with such errors) such as a poorly prepared application or an inadequate search of the trademarks database. Further, if the examiner deems your application to be substantively problematic (thus necessitating a reasoned written response based in law), or if a third party opposes your application, agents are well equipped to respond competently and efficiently.

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10. What’s the best way to draft a statement of goods/services?

Most people assume that, in order to best protect their goods and services, they must draft a very detailed and lengthy statement. However, it is in fact better to draft a simple and broad statement that encompasses the goods and services but does not go into great detail. To put this in perspective, which statement below provides the best coverage for a restaurant that serves alcoholic beverages and features vegetarian Mexican-fare?

  • I) Restaurant services featuring prepared vegetarian Mexican-style foods for dine-in or take-out, namely, burritos, enchiladas, fajitas, tacos, tamales, chalupas, flautas, and tortas, and alcoholic beverages, namely, lime, strawberry, raspberry, mango, and peach margaritas, beer, wine, and tequila.
  • II) Restaurant services; take-out restaurant services; bar services.

The answer, of course, is II. The second description is broad and does not confine the application to the limited dishes and drinks listed in statement I; the second description allows for flexibility in interpretation without being overbroad.

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