If you have been thinking about doing business in Canada, you may have wondered how to register your trademark locally. Intellectual property protection is national. Therefore, applying for trademark protection in each of the markets in which one intends to offer its products and/or services is a key component of every international growth strategy.
However, whereas the Nice Agreement has, since 1957, brought some element of uniformity concerning the international classification of goods and services for the purposes of the registration of marks, national trademark offices have interpretations of the classes of protection that may differ.
Depending on your market of destination, it is therefore very important to do some research and retain the services of a local legal agent who understands well how the national office interprets each of the classes but also knows how to access courts’ decisions regarding trademark disputes in the country.
For more information about our international IP services, please visit our international business lawyer page on our website. In this article, we introduce the rules applicable to register a trademark in Canada.
What exactly is a trademark ?
The Canadian Trademark Act (TA) defines in the law the 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”. Thus, it can be words, letters, sounds or symbols creating a unique combination which allows one’s products or services to differentiate from those of others.
The trademark is a form of intellectual property. It should, however, not be confused with patents, copyrights, or industrial designs, which serve a different purpose and require their own specific formalities.
One must also differentiate the trademark from the commercial name of the enterprise, the brand and the logo. The latter can be registered under the TA only if it’s used to identify the products and/or services offered by your company. In essence, the commercial name is the appellation under which your enterprise conducts its affairs, whereas the trademark refers to its product and service.
Why register a trademark ?
In Canada, it is not mandatory to register a trademark in order to use it. You will have a claim on your trademark through its usage during a certain period of time, even if it is unregistered.
Nonetheless, it will be easier to invoke the legal protections when you have a registered trademark, since the legal claim you have on it will be easier to prove.
It is not every trademark that can be registered in Canada, as the TA edicts certain restrictions. For example, one cannot register a trademark containing their owner’s name and surname or indicating the geographical area from which the products and/or services originate, or a trademark that can lead to confusion or that evokes an obscene idea.
What is the process for registering a trademark in Canada?
1- Search for the availability of the desired trademark
Firstly, it is advised to conduct research in the database of Canadian trademarks to ensure that your trademark does not already exist or that it won’t lead to confusion with existing ones. It is also a good practice to verify which commercial names are already in use for the same reasons.
2- File for a trademark registration
The second step is to file a trademark application and give some specific information, such as a thorough statement of the goods and services associated with the mark and a representation or a description of the trademark. A filing date will be attributed to your application, and the registrar will begin the examination process.
3- Publication in the Canadian Trade-marks journal and registration
If everything is in order and if there is no opposition in the two months following your trademark’s publication in the Canadian Trade-marks journal, it will be registered. The registration confers the exclusive right to use the trademark for ten years, a right that is renewable.
4- Use of the trademark in Canada
The registered trademark must be used in Canada. The registrar may request evidence of use and may proceed to deregister it if there has been no adequate use. This may result in the loss of any claim on said trademark.
What if I have a registered trademark in the USA ?
The TA grants a priority right to countries that are members of the International Paris Convention for the Protection of Industrial Property of 1883, or that are members of the World Trade Organization (WTO).
In practice, this means that if your company is incorporated in one of these countries, including the US, the date of filing of the first registration application outside of Canada will be deemed to also be the date of the filing in Canada, if the latter is made in the six months following the original foreign application.
In practice, this means that you will be able to assert rights to your trademark in Canada starting from the date of your registration in the US. This could even allow you to have a third party claim concerning your trademark cancelled if they registered it during this six-month period. Your subsequent filing in Canada must nevertheless target the same goods and services as in the US.
Duration of the trademark registration process in Canada
The trademark registration process in Canada can be lengthy and complicated. At the moment, it is taking approximately 24-28 months for applications to be examined. Hence, do not wait to apply !
Admitted as lawyers in both the U.S. and Canada, with particular expertise in intellectual property, we are ideally positioned to help you take your business abroad! Do not hesitate to contact us
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This article was written in collaboration with Irina Gueorguiev