TRADEMARKS REGISTERATION AND FILLING IN CANADA
The Trademark Act of Canada i.e.Trademarks Act (R.S.C., 1985, c. T-13) defines a Trademark as a sign or combination of signs that is used or proposed to be used by a person for the purpose of distinguishing or so as to distinguish their goods or services from those of others, or a certification mark.
In Canada registration is not obligatory but is recommended because it is a way of verifying the exclusive right that is established through using the trademark in relation to specific wares or services. Hence, registering a trademark with the Canadian Trademarks Office protects rights in that trademark in Canada only. Where an entity is providing wares or services in association with a given trademark in other countries, registration in each of such other countries should be applied for.
What you can and cannot register as a trademark in Canada?
What you can registerYou can register any trademark that does not contravene the Trademarks Act. For more detailed information, see the Trademarks Act here- https://laws-lois.justice.gc.ca/eng/acts/T-13/index.html
What you can’t registerTrademarks that are generally unregistrable include the following:
- Names and surnames
- Clearly descriptive marks
- Deceptively misdescriptive marks
- Place of origin
- Words in other languages
- Confusing with a registered or pending trademark
- Trademarks that are identical to, or likely to be mistaken for, prohibited marks
- You cannot register a trademark that indicates the geographical origin of a wine, spirit, or agricultural product or food unless your goods are from that geographical area. For example, you could not register the trademark “Okanagan Valley” if the wine you are making is from Ontario.
Who can apply for registration?
In order to be entitled to registration of a trademark, an applicant must be a “person”. A “person” may be an individual, partnership, trade union, association, joint venture, or corporation.
Canadian Trademark Application ProcessIn Canada, registration of a trademark consists of having the trademark entered in the Trademarks Register of the Trademarks Office of the Canadian Intellectual Property Office of Industry Canada. The entire process takes approximately eight to ten (8-10) months, unless there are opposition proceedings, in which case the process will be relatively longer.
Trademark Filing Procedure in Canada
In Canada, a trademark is registered by filing an application with the trade-marks Office alongwith the prescribed fee. 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.
Initial Examination. Within the following four months, the trade-marks Office examiners then carry out a search of trade-mark records for potentially conflicting marks. If there is no apparent conflict, the examiners then make an initial determination as to the registrability of the trade-mark, assessing such characteristics as whether the trade-mark is “clearly descriptive” or “deceptively mis-descriptive”. The examiners advise the applicant of any adverse findings, to which the applicant shall submit revised applications.
Approval. Once the trademark application has passed the conflict search stage and initial determination of registrability, the trade-marks Office will submit the application for Advertisement.
Advertisement. The trade-mark information is published in the trade-marks Journal. Any interested party may then make representations to the trade-marks Office, such as filing an opposition against registration of the trade-mark owing to alleged confusion with an existing mark.
Trademark Registration in Canada
To proceed to the final step of registration, prescribed fee is to be paid by the applicant within six (6) months from the date of the notice of allowance. Upon receipt of the registration fees, the trade-marks Office will issue a certificate of registration for each duly registered trade-mark.
Trademark Renewal in Canada
In Canada, registration of a trademark is valid for fifteen (15) years. A trademark registration is renewable every fifteen (15) years upon payment of a renewal fee.
In Canada, oppositions are managed by the Trademarks Opposition Board on behalf of the Registrar of Trademarks[1], and may take between two to four years, or more.
An opposition may be filed within two months of publication of the application in the Trademarks Journal on the Canadian Intellectual Property Office’s (CIPO) website, which may be extendible by upto two months[2].
Pleadings Stages:
Opposition filed by the Opponent with relevant grounds
Opposition is reviewed by the Registrar and forwarded to the Applicant
The Applicant files and serves a counter statement stating their intention to respond to the opposition within two months, extendible by one month
Evidence Stages:
The Opponent files and serves evidence affidavit / a statement that it does not wish to file evidence within four months, extendible by upto two months with consent
The Applicant files and serves evidence affidavit / a statement that it does not wish to file evidence within four months, extendible by upto two months with consent
The Opponent may file and serve reply evidence affidavit in reply to the Applicant’s evidence within one month, extendible by upto one month with consent
Either party may obtain orders to cross–examine the other party’s Deponents
Arguments Stages:
The Registrar will give both parties notice to submit and serve written representations
Either party may file a hearing request to make representations to the Registrar at an oral hearing
Once all the stages are complete, the Registrar issues a written decision, which is appealable before the Federal Court.
In order to encourage parties to settle the matters amicably, the Registrar may grant each party one extension upto a maximum period of seven months (for “cooling off”) on consent. This extension may be requested by any party facing a deadline at any stage of the proceedings before the hearing.