Click on the questions below to learn more about trademarks and the registration process. Please note that the following information is limited in scope and is not a substitute for legal advice. Please contact us with questions you may have about registering your 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.
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 10 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:
Yes, you can apply for and register a trademark that has never been used in Canada. Indeed, we recommend that you apply to register your proposed trademark as soon as possible, in part because it often takes over 2 years for an applicaton to reach registration. Note that, after 3 years of being registered, a trademark registration owner may be asked to provide evidence of its use of the registered mark in Canada or risk the expungement of the registration; therefore, trademark registration owners should ensure they use their registered marks in the Canadian marketplace consistently and keep evidence of such use.
If the application flies through the process without hindrance, applicants will simply pay CIPO filing fees ($330 for the 1st class of goods/services, and $100 for each additional class of goods/services), plus applicable agents’ fees (please contact us for details). For example, the CIPO filing fee for an application that covers baseball caps, coffee mugs, and backpacks would be $530, as the application covers three classes of goods: class 25 (hats), class 21 (mugs) and class 18 (backpacks). 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).
It varies depending on the complexity of the application and whether any hurdles are encountered during the process. Simple applications usually take at least 2 years to reach registration, but the process may take longer if office actions are received or opposition proceedings are brought.
Registered trademarks are protected for 10 years from the date of registration, but may be renewed for a fee (currently $400 for the first class of goods/services, plus $125 for each additional class).
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.
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?
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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