Have you considered registering a trademark for some aspect of your Canadian business? While not always necessary, trademarks can be a valuable way to protect core aspects of your business or products. Before you try to get one, though, it's important to know what they are and what the process entails.
Types of Trademarks
When you hear the word “trademark,” some company's logo probably pops into your mind. But there are many types of trademarks in Canada. Logos are an example of the “ordinary marks” kind of trademark. You can trademark words, symbols, or combinations of the two that make your company’s wares and services distinctive.
It's also possible to trademark a particular way of packaging or shaping your company’s wares as a “distinguishing guise.” For instance, a company that sold bath oil in a distinctive swan-shaped package might trademark the container. The last category of trademarks is “certification marks,” which identify wares or services that meet a defined standard. Think of the Woolmark design, for example.
Is Trademark Registration Necessary?
Trademark registration isn't strictly necessary. Using an unregistered trademark for a certain period of time establishes your ownership of the trademark through common law and gives you certain trademark rights. However, these rights are quite limited compared to the rights of a registered trademark owner. If your trademark is not registered, your rights are limited to the geographic area where the trademark has been used, and you will have to prove ownership of your trademark to the court.
On the other hand, once you've registered your trademark, you will have the exclusive right to use the trademark across Canada for 15 years (they're renewable for 15 years at a time), as well as the right to initiate infringement proceedings in either the provincial or federal courts.
Trademark registration is, of course, evidence of ownership, so if there is ever a dispute about your trademark, the burden of proof is on the challenger. Further, Canadian trademark registration can be used to claim priority in registering the trademark in foreign countries.
Considering that the essential purpose of trademarks is to establish a company’s reputation with the buying public, and that reputation may need to be defended sometimes, an unregistered trademark would be a relatively flimsy defense if you need one.
The Trademark Registration Procedure
The first step in trademark registration is to file an application with the Canadian Intellectual Property Office (CIPO). You can file a trademark application online through the CIPO's website. There are separate trademark application forms for agents as well as printable forms if you prefer to fill out the application and send it in.
Be aware that while you may file a trademark application based on “use or making known in Canada, foreign use and application/registration, proposed use in Canada, or any combination thereof,” in most instances your trademark must be used in Canada before it can be registered.
The basic cost of trademark registration is $330 (if submitted online) or $430 if submitted in any other way. These are the basic federal government fees and do not take into account the fees of a trademark agent.
Because the trademark application fee is nonrefundable, it's a good idea to check the CIPO's online Canadian Trademarks Database first to see if there are other similar trademarks that might conflict with the one you want to register.
What Happens After You File
So you’ve done your own trademark search (or have had a trademark agent do one for you) and filed a trademark application. Once the CIPO receives your trademark application, it will give a filing date and an application number, which then proceeds with a five-step examination process. You will receive a formal filing acknowledgment at this stage.
Meanwhile, the CIPO:
- Searches the trademark records to find any other trademark that may come into conflict with the one you've submitted. If one is found, you will be informed.
- Examines your trademark application to ensure that it complies with the requirements of the Trademarks Act and Regulations and informs you of requirements that are not met by the application.
- Publishes the application in the Trademarks Journal, which is issued every Wednesday.
- Allows time for challenges to the application. Anyone may, upon payment of $750, file a statement of opposition with the registrar. If there is opposition, the registrar of the CIPO will consider the evidence filed by either or both parties and decide whether to refuse your trademark application. In such a case, both parties are notified of the decision and reasons why.
- Assuming there is no opposition to your trademark application, the mark is allowed. Upon payment of the registration fee and the filing of a declaration of use (in the case of a proposed use trademark application), your mark is registered, and you will be issued a trademark registration certificate.
Note that trademark registration through the CIPO only protects your trademark rights in Canada. If you are selling wares or services in other countries, CIPO advises that you should register your trademark in each of those countries as well.
As you can probably guess, a trademark registration can be a long process. In most cases, at least a year may elapse from the day you file your application until the government issues your certificate.
You don’t have to wait until your trademark is registered to use it, though. You'll just have full protection once your application finally goes through.