Trade Marks – Frequently Asked Questions

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What is a trade mark?

A word or words, symbol, design or combination which distinguishes one product or service from another and identifies the source for purchasers, e.g. STARBUCKS for coffee.

Who can apply?

Individuals, partnerships, companies, legal associations and joint ventures.

Why register?

Registration in the Canadian Intellectual Property Office (CIPO) is proof of ownership, warns competitors of your prior rights and is enforceable against infringers anywhere in Canada.

Registration is not mandatory, but has some important advantages:

  • Others can search the register to avoid a conflict with your mark
  • The CIPO can refuse registration to a confusingly similar mark
  • It is enforceable anywhere in Canada
  • You can use it to claim priority in other countries
  • It is virtually incontestable after five years
  • It supports the registration and protection of a similar domain name
  • It can be an important intellectual property asset

What does the process of registration involve?

There are several stages:

  1. Searches to identify any conflicts or problems
  2. Preparing and filing the application
  3. Examination by the CIPO
  4. Advertisement in the Trade Marks Journal if it is approved
  5. Opposition if a third party objects
  6. Allowance if there’s no opposition
  7. Registration

Does a registered business, trade, corporate or domain name have the same legal effect as a registered trade mark?

No.  A registered trade mark will generally prevail over all of these if there is any confusion over similar wares or services.

If two trade marks are confusing, which one has priority?

The one that was filed or used first in association with goods or services in Canada.

What trade marks are not registrable?

  • Marks which are confusing with an existing trade mark.
  • Names and surnames, unless they are famous.
  • Words which are clearly descriptive or deceptively misdescriptive of the goods or services or where they come from, eg. MINTY for mints.
  • Prohibited marks such as the Red Cross emblem or the flag of a country.

Why do a search?

To anticipate and perhaps avoid a conflict with another confusingly similar mark later on, when the potential consequences can be expensive and disruptive.

Does a trade mark have to be used before an application can be filed?

No, you can file based on proposed use, but it has to be used before registration will issue.

How long does it take to get a registration?

12 to 18 months from filing to registration if there is no objection/opposition and the trade mark is in use, but the important thing is to file and establish your right to the trade mark as soon as possible.

How long is a registration good for?

15 years, renewable indefinitely so long as the mark is in continuous use.

Does a Canadian registration protect the mark outside of Canada?

No, but we can help you to file applications to protect the mark in other jurisdictions.

What information do you need to prepare and file an application?

  1. Applicant information – your name and address
  2. Trade mark – if it is a design, submit a clear copy
  3. How you came to own the trade mark –  include the name of any party who owned or used it previously
  4. Use of mark in Canada – describe how, since when and with what kind of wares or services
  5. Who else will be using the mark – include how the mark is being used or will be used
  6. Wares or services – describe any wares or services to be associated with the trade mark
  7. Pending applications outside of Canada – details of any pending applications/registrations for the same mark

What should foreign applicants and associates take note of?

  • No power of attorney or other legalization is required.
  • Canada does not follow the International Classification System,
  • so goods and services should be described in ordinary commercial terms.
  • Canada is a signatory to the Paris Convention so foreign applicants from other member countries can claim convention priority if the Canadian application is filed within 6 months of the original filing.
  • The applicant does not have to sign the application.
  • Filing in our local CIPO office has the same effect as filing
  • in Ottawa.
  • Vancouver is 3 time zones behind Toronto, Montreal and Ottawa, so we have an extra 3 hours to meet any urgent deadlines

 

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