The Canadian Trademark Application Process

How to Trademark a Name in Canada

Wondering how to register a trademark in Canada? On this webpage, we outline the process and procedure for how to trademark a logo in Canada and how to trademark a name in Canada.

How to get a trademark

The question that often arises is how to apply in Canada for a trade mark or how to register a brand in Canada. Although you do not necessarily require a Canadian trademark lawyer if you are a Canadian business, the process of applying online for a Canadian trademark id deceptively simple. Often clients start out with researching how to register a trademark in Canada and try themselves, only to run into issues along the way.

There are two primary kinds of trademarks in Canada, a “design mark” which is sometimes referred to as a logo, and a “word mark”, which is just the brand without any design elements. For how to trademark a logo, see below. It is the same basic procedure of how to trademark a name in Canada that is composed of words only. The difference lies in sometimes specifying colours and in providing an image of the trademark goods or trademarked services as part of how to trademark a company name, or how to trademark a name in Canada or how to get a trademark.

The Process of How to Trademark

Registering a Trade Mark

Registering a trade mark involves several steps. Registering a trademark name begins with the trade-mark application process in Canada consists of a series of stages through which your application must proceed before your trade-mark can be entered on the Canadian register of trademarks. The entire application process, from filing the application to receiving the certificate of registration evidencing your registered trade mark, can last anywhere from eight months to over two years. A trademark registration is valid for 15 years, and may be renewed for successive fifteen year periods thereafter.

The following is an overview of the different stages in the trade-mark application process: for registering trade mark. Trademark online registration is possible in Canada for a CIPO trademark using CIPO’s online trademark registration services often with the assistance of a trademark lawyer.

FORMALITIES

After the trademark application fee has been filed with CIPO trademarks office, the Formalities Section of the Canadian Trade marks Office in Ottawa, Ontario will review it to ensure that it is complete and that the proper administrative fee has been paid. If everything is in order, a file for the application will be created and entered in the database, and the application will be assigned a filing date and an application number. This stage of the trademark registration process can take anywhere from a couple of days to a couple of weeks.

EXAMINATION

The application will then be assigned to an examiner at the Trade-marks Office who will evaluate the contents of the application and determine if your application can result in a registered trademark, i.e. a registered trademark Canada. The examiner will conduct a CIPO trademark search of the CIPO trademark registration in Canada database of trademark registration Canada to determine if there are any prior trade-marks that have a trademark registration online number, registered or in a pending registration, which are confusing with the applicant’s trade-mark. The examiner will also determine if the applicant’s trade-mark and the application itself complies with the formal and substantive requirements of the Trade-marks Act.

If there are no problems trademarking, the application will be approved for the advertisement stage following your trademark registration online application. If, however, the examiner has objections to the application for trademark registration, the examiner will outline the objections in a report and provide the applicant with an opportunity to make changes to the application or submit arguments responding to the objections. If the examiner still has concerns about the application for Canada trademark registration, the examiner will send another report requesting additional changes as part of the trademark registration procedure. Each report that is issued by the examiner is called an “office action” because it is an action against the application that is taken by the Trade-marks Office. A resolution may be reached after the exchange of one or more response letters . In the event that a resolution cannot be reached, the application will be refused by the Trade-marks Office or abandoned by the applicant. It normally takes approximately six to eight months for the application to reach the examination stage. For each office action, a response must be submitted within four months. There is no trade mark registration form that you can use for such responses to office actions. If no response is submitted and no extension of time is requested, the Trade-marks Office will declare the application to be abandoned.

ADVERTISEMENT

After the application is approved, the trademark registration process will continue, it will be advertised in an issue of the Trade-marks Journal. Typically, it takes approximately four months for the application to appear in the Trade-marks Journal as a registration of trade mark after it has been approved. During the two-month period after the application is advertised, any member of the public may come forward to oppose the application because they have for example, a registered trademark of their own that is similar. If the application is opposed, it is taken out of the application process until the opposition is resolved. However, if no one files a statement of opposition, or requests an extension of time to file a statement of opposition, within the two-month period, the application will be allowed for registration. The advertisement state is a key part of how to obtain a trademark and how to trademark a name, including how to trademark a business name in Canada.

REGISTRATION

After the application is allowed, the Trade-marks Office or “CIPO” the trade mark registry online for Canada, will require payment of a final registration fee before the trade-mark is entered on the trademark register and a trademark registration number will be assigned. If the application is based on proposed use in connection with registering trade mark, a declaration stating that the trade-mark has actually been used in Canada as a Canada trademark by the applicant must be submitted along with an additional filing fee. The required fees and the Declaration of Use must be submitted within six months from the date of allowance or three years from the filing date, whichever is later. Although until a recent rule change, affected how to trademark a name in Canada, a date of use must have occurred in Canada, the procedure no longer requires specifying a date of use. If more time is needed by the applicant to put the trademark in use, the Trade-marks Office will grant extensions of time for the applicant to submit the Declaration of Use. Each extension of time is for six months and an additional fee must be paid for each extension in connection with registering a trademark CIPO in Canada. Approximately one month after the submission of the registration of trademark fee, the Canadian trademark office will register a trade mark and issue a Certificate of Registration in the register trademark Canada database to the applicant and that will be your trademark registration for your trade mark registration in Canada.

Below is a chart showing the steps in a Canadian trademark application
1
Application Field
2
Formalities

2 days-2 weeks Reviewed for administrative complance.Application number assigned

3
Examination

6 months - 2 years Trademark searched. Reviewed for procedural/substantive compliance. Any ofice actions issueed

4
Application Approved

Or application refused or abandoned

5
Advertisement

2 months Trademark advertised in Trade-mark Journal. Any opposition filed

6
Application Allowed

Or application opposed or abandoned

7
Registration

2 days-2 weeks Reviewed for administrative complance.Application number assigned