Introduction:

A trademark can be a word, letter, symbol or combination of these and so on. A trademark is an essential for running the business as the customers recognize the business with the trademark name. We witness trademark examples almost daily for instance the mark on the bottle from which we drink water, the trademark on our clothes and so on. The trademark is not just a name, it grows as the business grows and its value enhances over time. Registration of trademark provides ample benefits to its owner which includes a right to sue for infringement, assigning the mark and so on.

Steps to register trademark in Canada:

 

Canada also follows NICE classification for classification of goods and services. The laws of trademark are guided by the Trademarks Act (R.S.C., 1985).

First and foremost visit the website of Canadian Intellectual Property Office (CIPO) through the link “https://ised-isde.canada.ca/site/canadian-intellectual-property-office/en”. Scroll down the home page and stop when you come across the section “IP Rights and Services”. Within this section there are various IP options available such as Trademarks, Patents, and Copyrights and so on. From this section you can click the very first option available that is trademarks to begin the process of registration.

Public Search:

One must always conduct a public search before applying for a mark as it makes you aware of any existing similar/identical mark and saves unnecessary delay of filing a new mark, if later any objection arises. ‘Trademark Search’ option opens portal for Canadian database where options  are provided to conduct advance search. You can search a trademark based on its application number, Registration number, Old owner or new owner name, goods, services, NICE Classification and so on. One can also use various filter options provided to search a mark.

Application and Examination:

Online, via mail, or by fax, submit your application to the Canadian Intellectual Property Office (CIPO). Your name, address, trademark, goods or services connected to the trademark, and the application cost must all be included in a comprehensive application. One can also file multi class application. The total search and filing fees in Indian Currency for a single class is INR 145546.73 and in US Dollar is 1778.64 USD. In the “Get Quotation” section you can calculate the total fees in almost any currency.

If your application is submitted correctly, CIPO will give it a filing date and an application number. You will have your application added to the Canadian Trademarks Database. If a trademark’s priority is asserted, the registrar may ask for a certified copy of the priority document. Further in Canada, there is no need for a Power of Attorney when submitting a trademark application.

Post filing of application, the application shall be reviewed by the trademark examiner and if any discrepancy regarding the trademark application or similar mark is found which might cause confusion with the applied mark, the same shall be mentioned in a report generated by the trademark examiner within eighteen months of filing date. The response to the examiner’s report is to be filed within six months from the date on which examiner’s report was generated. Further if one is not satisfied with decision of the trademark examiner, an appeal may be filed in Federal Court of Canada.

Advertisement and Opposition:

Contrary to the above if no discrepancy is found, a notice of approval shall be provided by CIPO and then CIPO proceeds with the advertising of the mark in Trademark Journal for a period of two months. During this period a third party may oppose your application for registration and if any opposition is filed the Trademarks Opposition Board will communicate to you about the same. Both the parties (applicant and the opposing party) will file their evidences and written arguments. A hearing shall be conducted within 15 months of receipt of a client request and the decision for the shall be given within 4 months of the hearing.

If the opposition wins, the chances are that the application for trademark registration could be completely or partially refused. However the applicant has a right to appeal.

Registration:

In case where no opposition is filed or opposition so filed is rejected, then the application will be furthered for registration and CIPO will send a certificate of registration and enter the trademark in the Register of Trademarks. In case of smooth registration procedure, an average processing time of a trademark in Canada from filing to its registration is approximately 24-32 months.

Conclusion:

A trademark is registered for a period of 10 years and can be renewed within six months of expiry of trademark for a period of another 10 years. A trademark once registered may be removed from the Register of Trademarks under section 45 proceedings wherein a mark may be removed if non usage of mark is proved, during the three-year period preceding the date of the section 45 notice.