Canada Trademark Guide: Why & How to Protect Your Brand

Canada Trademark Guide: Why & How to Protect Your Brand

Nov 16 2016

When building a business, one of the key things to consider is how your consumers view you — your business name, logo, website and marketing copy, colours, etc. These are valuable assets that you want to protect, ensuring that no one else takes advantage of your hard earned brand development.

Once your brand is developed, the next question to ask is: Should I trademark my business name, slogan and/or logo? That’s what we set out to answer in this article; the what, why, how (and how much) of trademarks. Enjoy.

1. What is a Trademark?

A trademark protects whatever distinguishes one product or service from another. To put it another way, a trademark is a declaration that you (and only you) are able to use a mark for designated goods and/or services.

A trademark isn’t limited to your business name and logo, it can include words, designs and even sounds. Common examples include “Tim Hortons”, the McDonald’s arches and the Nike swoosh. Some lesser known trademarks include Apple’s Mac startup chime, John Deere’s yellow and green colours, and the hour glass shape of Coca-Cola’s bottles.

2. Why should you apply for a registered Trademark?

You don’t receive significant trademark protection just by using your brand name and logo. To properly protect your brand and obtain legal rights as a trademark owner, you are required to register the trademark with the federal government.

A registered trademark provides you with exclusive rights to use the mark in Canada for 15 years (although this is changing to 10 years starting in late-2017 or early-2018). You can always renew your trademark when the time is up.

Other benefits of trademark registration include:

  • Documented Intellectual Property is valuable and easily transferable in the event of a business sale;
  • The Trademark is licensable and can be a source of future revenue;
  • You have recourse if your trademark is infringed. The federal Trade-marks Act has powerful tools to enforce your rights.

3. What can’t be Trademarked?

There are a number of marks that cannot be registered. These include:

  • Confusing — Words or designs that could be confused with a registered trademark or pending trademark. For example, imagine there is a travel company with the name ‘Go North’. If another company tried to register ‘Go South’ for travel services, they could be rejected as it would be considered confusingly similar.
  • Proper Names— A trademark cannot be registered if its simply for a name (i.e. John Doe). Exceptions exist if you can prove your goods or services have become well known under the particular name in the public’s mind.
  • Purely Descriptive Marks — A word which simply describes the product or service will be rejected. For example, ‘Fast’ for cars, ‘Red’ for apples, and ‘Green’ for spinach — are all natural characteristics of the products. That being said, if you can prove that the public attributes ‘Red Apples’ to one particular brand of apples, then a trademark may be registrable.
  • Deceptively Mis-descriptive Marks — A mark cannot be registered if it attempts to deceive the consumer. For example, you could not register “Organic Gold” for a grain company that sells non-organic oats.
  • Geographical Locations — Words that represent a geographical location that is commonly known to be the place of origin of the goods or services are not registrable.
  • Words in Other Languages — You cannot register words that are the name of the goods in another language. For example, ‘Gelato’ is not registrable for an ice cream product.
  • Prohibited Marks — You cannot register words or designs that look very similar to a prohibited mark, such as the Canadian Flag, Red Cross, provincial symbols, etc.

4. How to register a Trademark

There are five major steps to registering a trademark.

  1. Search — The first step in registering your mark is to conduct a search of the Canadian Intellectual Property Office’s (“CIPO”) trademark database. This will provide you a list of similar trademarks as well as details of the owner and associated goods and/or services.
  2. Apply — Filing a Trademark Application can be made directly on CIPO’s website. The initial cost is a filing fee of $250.00. We go into detail below on why it’s important to have a registered Trademark Agent assist with preparing the application. CIPO also explains the benefits of having a Trademark Agent prepare the application on your behalf.
  3. Examination — Approximately 6 months after your application has been submitted, a CIPO trademark examiner will review it and determine whether it can be approved for advertisement. The examiner will review a number of items, including: a search of existing or pending trademarks that could conflict with your trademark, confirming the wording of the goods and/or services is unambiguous, and confirming that your application obeys the Trade-marks Act and other regulations.
    You will receive one of three letters from the trademark examiner:
    • Approval Notice — This means that your Trademark application has passed the first hurdle and is scheduled to be advertised in the Trademarks Journal. Good work!
    • Notice of Deficiency or Incompleteness - The examiner will explain the deficiency (for example, that the statement of goods and/or services needs to be more specific) and you will have an opportunity to prepare a revised application for no fee.
    • Substantive Office Action — The examiner will explain why your application is barred from registration for substantive reasons. You will be given an opportunity to provide written reasons to the examiner setting out why your application should not be barred. If your answers do not satisfy the examiner, you will receive another letter stating that your application has been refused. If you still want to proceed, you will need to consider taking legal action to move forward with your application.
  4. Advertisement — After your application has been approved, it will be published in the Trademarks Journal. At this point, others can oppose your application (for example, because they believe your trademark is too similar to theirs). If the application is unopposed, you’ll receive a ‘Notice of Allowance’ from the examiner and can move forward to the Registration stage.

    If your application is opposed, then opposition proceedings begin. This process gets complicated quickly. An important thing to note: if you’ve already hired a trademark agent to prepare the initial registration, opposition proceedings will surely be an additional (and likely expensive) cost.
  5. Registration — Your trademark application will be allowed for registration after you pay the required $200.00 registration fee. This is assuming your application is based on prior use of the mark.

    If you filed your trademark application based on proposed use, then you won’t be able to register your trademark until you’ve started using the mark. Once you begin using the mark, you can file a Declaration of Use and pay the required $200.00 registration fee.

5. Why should I hire a professional to register a Trademark?

Trademark agents must pass an exam to be qualified and authorized to represent applicants in the registration and presentation of trademarks.

An experienced trademark agent does three things to add value to your application:

  • Search and examine existing Trademarks: Trademark agents will conduct an initial search to determine whether your intended mark is trademarkable. This is an important first step and can save you considerable time and money.
  • Correct description of goods and/or services: Trademark agents will ensure that the description associated with your goods and/or services is sufficiently broad to capture current and future uses along with being specific and unambiguous. Poorly worded description of goods and services are a common reason for examiners to send notices of deficiency.
  • Respond to Examiner’s Questions: Trademark agents will receive and be able to provide advice as to how to best respond to any notices received from the examiner at CIPO.

6. How much does it cost to have a professional register my Trademark?

That’s easy! Through Law Scout, it’s a fixed price of $925.00. This includes the initial $250.00 CIPO registration fee. Details of the legal project can be found here.

Your lawyer will review your mark, its use and your business. They will then conduct a search of existing Trademarks and prepare the application, ensuring the description of goods and/or services is appropriately broad to capture future uses and unambiguous. Your lawyer will also remain on the record as agent to receive any report from the examiner (as described above in the examination section).

You will be responsible for the additional $200.00 CIPO application fee once your Trademark is approved.

7. How long does the Trademark registration process take?

The entire process typically takes between 12 and 18 months. The time to prepare and submit the initial application does not take long, however, as explained above, there are periods where you must wait for several months for a response from the examiner and to allow for publication.

Final Words

Congratulations! Once you’ve received the registration certificate, you’ll now be able to use the ® symbol to provide notice that your trademark is registered. That being said, omission of the ® symbol does not invalidate a trademark.

If you have any questions, feel free to send us an email at info@lawscout.ca and we’d be happy to help you out as soon as possible. Or, if you’d like to register a Trademark right away, simply click here.