To avoid potentially costly objections from the Canadian Intellectual Property Office, or an opposition to the registration of your trademark, before applying for registration, it’s important to conduct a comprehensive search to ensure your desired trademark is not already pending or registered in Canada. The search should also include a search for trademarks currently in use in Canada, but have not yet been registered. Having a professional conduct your availability search can assist you in avoiding costly and time-consuming objections to registration. We can help you with this important first step, as well as the below trademark services.
Your application must contain accurate and detailed information about the applicant, the trademark being applied for and a description of the goods and/or services with which you intend to, or are using the mark in Canada. The description of goods and/or services must be described in “ordinary commercial terms” that are considered acceptable by the Canadian Intellectual Property Office (“CIPO”). If there are any deficiencies in the information provided in the application, or issues with the description of goods and/or services, CIPO will issue an objection that must be resolved in order for your application to continue to registration.
Your application is the foundation of your registration and it is important that this foundation be prepared and filed correctly. Utilizing the services of a seasoned professional will help you avoid potential pitfalls in the preparation of your application.
Once your application has been submitted, CIPO will conduct an examination to ensure the application meets the necessary requirements, including an acceptable description of goods and/or services. In addition, CIPO will assess whether the mark that is applied for does not contravene any of the provisions of the Canadian Trademarks Act. For example, CIPO will object to a mark that is considered to be clearly descriptive of the goods and/or services designated in the application. CIPO will also conduct a search of the Canadian Trademark Register, to ensure that your applied-for mark is not confusing with a mark that is already pending or registered.
If a CIPO examiner determines that the mark that is applied for is not registrable because the mark is considered confusing with a pending or registered mark, descriptive, not distinctive, or contravenes another provision in the Trademarks Act, an objection to registration will issue. The objection must be successfully overcome in order for the application to continue to registration.
If CIPO has objected to the registrability of your mark, we can help. We have the knowledge of Canadian Trademark Law and the experience necessary to advise you regarding the filing of a response and provide you with the most cost-effective strategy to get you to the ultimate goal – registration.
If any issues or objections arise during the examination, CIPO will issue an office action detailing the concerns. You must respond to these objections within the specified timeframe, providing arguments or amendments to address the concerns.
Once your application has successfully passed the examination stage, CIPO will publish the details of your application in the Trademarks Journal, which is a weekly online publication of CIPO’s. The purpose is to provide for a two-month window from the date of publication, during which another party who can show valid grounds may oppose the registration of your mark. Typically, an opposition would be filed if another party believes the registration of your mark would prejudice their rights.
If an opposition is filed, it must be resolved before the application can proceed to registration. Oppositions can be time-consuming and costly. Consulting a professional can help you navigate opposition proceedings. We can help you with each step of the proceedings and advise on the most cost-effective strategy.
If no opposition is filed against your mark, or if opposition proceedings are resolved in your favour, your Certificate of Registration will issue. The registration is renewable every ten years. It is important to maintain your registration by using your mark correctly and licensing and third-party use. A trademark professional can advise on any pitfalls that could adversely affect your ability to enforce your rights. We can assist in this regard, as well as in the preparation of assignments and licenses to ensure the integrity of your ownership rights are not compromised.
It’s important to note that the trademark registration process can be complex, and it is recommended that you consult with a trademark professional for guidance and assistance throughout the process. A licensed Canadian Trademark Agent can advise on potential issues prior to applying for registration, ensure that your application is prepared correctly and increase your chances of successful registration. Read our FAQ or trademark news for more information.
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