A trademark is a word, a symbol, a design or any combination thereof used in association with wares (products) or services. It is a useful tool for distinguishing the wares or services of one entity from those of others in the marketplace. A trademark may come to represent not only wares and services, but also the reputation of the provider of such wares and services. As such, a trademark may constitute valuable intellectual property.
Registration is proof of ownership and therefore a key way of protecting a trademark from misuse and imitation. 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. It is important to realize that, while registration affords the greatest possible legal protection against infringement or misuse of a trademark, it is, and can never be, a failsafe guarantee against all problems relating to trademark usage. Furthermore, 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 considered.
In Canada, registration of a trademark consists of having the trademark entered on the Trademarks Register of the Trademarks Office of the Canadian Intellectual Property Office of Industry Canada. The entire process takes approximately ten to twelve (10-12) months, unless there are opposition proceedings, in which case the process can be much longer.
Application. In Canada, a trademark is registered by filing an application with the Trademarks Office together with a non-refundable fee of two hundred and fifty dollars ($250.00) for each trademark applied for. It is possible to file an application for registration of a trademark that is not yet in use somewhere in Canada.
Initial Examination. Within the following four months, the Trademarks Office examiners then carry out a search of trademark records for potentially conflicting marks. Should there be no apparent conflict, the examiners then make an initial determination as to the registrability of the trademark, assessing such characteristics as whether the trademark is "clearly descriptive" or "deceptively mis-descriptive". They will also decide whether the description of the wares or services complies with the regulations and is in normal commercial terms. The examiners advise the applicant of any adverse findings. Applicants may be required to submit revised applications.
Approval. Once past the conflict search stage and initial determination of registrability and any revisions to the application the Trademarks Office will submit for Advertisement.
Advertisement. The trademark information is published in the Trademarks Journal. Any interested party may then make representations to the Trademarks Office, such as filing an opposition against registration of the trademark owing to alleged confusion with an existing mark. Should this happen, opposition proceedings can, if successful, bring the application process to an end or otherwise delay the registration process for eighteen (18) months or more.
Allowance. If the Trademarks Office receives no objection within approximately two (2) months of publication in the Trademarks Journal, the Trademarks Office issues a notice of allowance of the application for registration.
Registration. To proceed to the final step of registration, a fee of two hundred dollars ($200.00) per trademark must be paid by the applicant within six (6) months of the date of the notice of allowance. Upon receipt of the registration fees, the Trademarks Office will issue a certificate of registration for each duly registered trademark.
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