How To Register A Trademark In Canada?
If you’re considering starting your eCommerce business and selling your products in Canada, learning about trademarks is essential.
Luckily for you, registering a trademark in Canada is relatively easy. However, it can be confusing if you’re unfamiliar with them and intellectual property law in general. Venturing into trademarking without the knowledge needed can lead you down unfavourable (and illegal) paths.
But don’t worry, because this guide will explain how to register a trademark in Canada and provide other trademark-related information at your finger-tips.
What Is a Trademark?
A trademark is a unique image, word, or phrase that one company uses to make its products stand out from the competition.
The Canadian Trademark Act (TA) is the primary law that applies to trademark registration and legalisation in Canada.
Under this trademark law, registration generally grants certain rights to a mark owner as outlined in the law itself. As a matter of fact, one of these rights is the right to sue third parties who infringe on the mark in Canada or internationally.
Next is the exclusive right to use the registered trademark in Canada. This is followed by the right to prohibit others from using any confusingly similar trademark. That said, this right extends to any state or country where the trademark owner intends to distribute or market goods or services.
What is The Difference Between a Trademark, Copyrights, and Patents?
As previously mentioned, a trademark represents a word, phrase, or design that identifies the source of goods or a service provider. Thus, if a brand name is registered, it can serve as the exclusive right of an individual or a company to use the trademark.
Copyright is a form of intellectual property protection, and it helps artists, musicians, writers, and others to protect their original works. Additionally, the copyright owner has the only legal right to distribute, show, or license the material while the copyright is still active. Unlike trademarks, copyrights don’t need to be registered.
Note: Some copyrighted materials, usually educational, news-related reports, etc., undergo a form of distribution. This is due to the ‘fair use’ rule.
A patent is a legal document, i.e., an exclusive right given (for a limited time) to an invention that serves as a barrier against other companies that make, uses, or sell the product. The patent is granted to the new product, not the concept’s idea or material used.
As you can notice, patents, copyrights, and trademarks are all intellectual property protection tools that help to safeguard different types of creations. Briefly, patents protect a new invention (new, unique products). While copyrights serve to protect the original works of authorship. Finally, we need trademarks to guard our brands and logo.
Why Register a Trademark?
Franchising is a huge business in Canada, and the country has the most franchised outlets per capita globally. Namely, franchised businesses account for approximately 45 percent of all retail revenue in Canada.
Trademarking a name in Canada with the country’s intellectual property office will bring many advantages to you and your business. Hence, a registered trademark gives you unique rights to use it in commerce nationwide.
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However, this is only one of the many advantages of registering a trademark. Here are some more benefits a registered trademark grants you:
- enjoy complete protection for ten years Canada-wide;
- right to prevent others from using similar marks/logos that may cause confusion;
- rightful predisposition in a legal battle over ownership of your business or products, etc.
The Procedure of Trademark Registration in Canada
The timeline for registering a trademark in Canada typically ranges from 18-24 months. You can expedite the process, but additional costs will be applied if doing so.
It’s important to note that not all trademarks will be approved during the registration. Several factors go into determining whether or not a trademark is accepted, including
- how similar it is to an existing mark,
- the likelihood of confusion among consumers,
- the extent to which the mark is descriptive
- or maybe the mark can’t be registered at all, i.e., it doesn’t qualify under the Trademark Act regulations.
Here is what the procedure for trademark registration in Canada includes:
You’ll need to file the Canadian trademark application with the Canadian Intellectual Property Office (CIPO). Ensure your application is completely and correctly filled.
Once your application is received, CIPO will conduct an initial inspection to make sure that the application meets all the criteria.
If your application passes the primary examination, it will be automatically approved. Hence, it’ll be published in the Trademarks Journal.
After your trademark is published in the Trademarks Journal, anyone can oppose it within two months.
If there are no objections against your mark, it will be allowed and registered officially.
Assuming there aren’t objections against the trademark you applied to register, CIPO will finalize the registration process. Once done, you’ll receive a certificate of registration.
How to Register a Trademark in Canada?
So, how to trademark a name in Canada? What’s the procedure?
The following is a short step-by-step guide on trademark registration.
Pick a Strong Mark/Logo
A solid distinctive trademark, one that strikes out among others and is easy to remember. Furthermore, it shouldn’t be too similar to existing brands or descriptive of the goods or services you’ll use it for.
Following the categories trademarks belong to, based on their level of distinctiveness, they can be:
- Generic/ Descriptive — clean-cut description of the products/ services offered;
- Suggestive — these don’t point out directly the characteristics of the product offered (they only give you a clue of what’s the product about);
- Arbitrary — a random, everyday word that has no connection with the product you offer;
- Fanciful — this is a neologism (a newly created word/phrase).
Get an Attorney (optional)
You can register a trademark by yourself, given that you have a valid address in Canada. Or, you’ll need an experienced trademark attorney to help you do it. The latter gives you the best chance of success.
A trademark attorney can help you choose a strong mark and navigate the often complex legal process for trademark application in Canada.
Before you file for registration, it’s important to make sure that your chosen mark is available in the brand registry in Canada. The best way to be sure about this is to check with the Canadian Trademarks Database.
Apply For Registration
Once you’re sure your mark is available, you can file for registration with the Canadian Intellectual Property Office. The application process can be a bit complicated, so it’s essential to read the instructions carefully before applying.
Don’t Ignore CIPO’s Requests
After you’ve filed your application, CIPO may request additional information or clarification. It’s vital to respond to these requests promptly and accurately. Otherwise, you put at risk the success of the application.
Registration and Publication in The Canadian TradeMarks Journal
As soon as your application is approved, it will be published in the Canadian Trademarks Journal. After this, you’ll officially be registered as the trademark’s owner.
After you’ve been officially registered, remember that your trademark is renewed every ten years. Furthermore, ensure its proper and legal use; failure to do so could result in it being cancelled.
Trademark Registration Costs and Fees
When you trademark a business name in Canada, you must cover some fees for the process to be successful and legit.
The fee you must cover for services subject to the yearly adjustment will be determined by the day the Registrar receives the fee – not the date you asked for the service.
For example, you must pay the current year’s charge if the payment is received before 1st January of the following year. Accordingly, if you get the payment after or on 1st January, you must pay the updated cost for the new year.
Fees for a trademark registration application – if the request and cost are filed through CIPO’s site:
- 2021 Fee ($ CDN): $336.60
- 2022 Fee ($ CDN): $335.93
Fees for a trademark registration application – if the request and cost are filed by a different method:
- 2021 Fee ($ CDN): $438.60
- 2022 Fee ($ CDN): $437.72
All additional costs and other fees for different procedures are listed on the official Canadian government site.
How To Renew a Trademark?
The process for renewing a trademark in Canada is pretty straightforward. However, a few key things must be done for the process to go smoothly.
Foremost, it’s essential to note that trademarks in Canada are registered for ten-year periods, as already mentioned. Therefore, to renew your trademark, you’ll need to do so within six months of the expiration date. Otherwise, your trademark will be considered abandoned, and you will lose all rights.
For the renewal to be processed entirely, there are also specific fees that need paying. As follows:
- First-class goods/ services – CAD$ 400;
- Multiple classes – CAD$ 125 for each class.
Note: The costs mentioned above are charged when submitting the renewal application.
Step-By-Step Guide on Trademark Renewal
To renew your trademark, follow these steps:
- Visit “My Canada Business Account,” previously known as ‘My ISED Account,’ and log in.
- Next, you can access the registration and renewal services online.
- Use this particular web app to pay for the registration fees or the renewal registration of your trademark.
- Now, you can get your renewal certificate.
Note: As soon as you’re registered or your renewal is done, you’ll have online access to the registration and renewal certificates.
In case any problems cross during the renewal procedure, contact the client service center.
A brand registration procedure is a relatively straightforward process. However, it’s important to remember that specific steps and requirements need to be met for your application to succeed.
Now you have all the info on how to register a trademark in Canada step-by-step. Moreover, you know why registering it’s essential in the first place.
We hope you found this guide informative and helpful. Good luck registering your trademark in Canada!
Registering a trademark yourself is doable. Though, most people choose to work with a trademark attorney or firm to register theirs.
One can transfer ownership of a trademark with a trademark assignment – a document signed by the initial owner or the “assignor.” This document signifies the transfer of the trademark ownership to the new owner (“assignee“).
In most circumstances, the assignee isn’t required to sign the paperwork. This is because the assignor merely signs the trademark assignment to transfer trademark rights.
Most trademark applications in Canada are processed in a period of 18 to 24 months. However, a few factors can impact the timeline, like the complexity of the trademark and whether any objections are raised.
If you need more details on how to register a trademark in Canada, visit the CIPO website.