5 reasons to register your beer or brewery brand

Did you know that behind every beer there is a trademark that must be unique, memorable and distinctive? Why protect your names and logos?

✅ Unique identity

The name and logo of your company and your products are your distinctive signature in a competitive market. Protecting them ensures that no one else can capitalize on your reputation.

A protected brand inspires confidence in consumers. They know that your products meet high quality standards and are authentic.

✅ Charter of the French language

As of June 2025, only the filing of a registration application will allow you to use a mark in English or a foreign language in Quebec. Otherwise, you will have to translate your brand if it is in a language other than French to be able to use it in Quebec.

✅ Intellectual property

Registering your trademarks gives you exclusive rights to their use and allows you to prevent unauthorized use throughout Canada.

✅ Expansion and growth

In most markets, rights are created by filing an application for registration, not by being the first to use it.

By protecting your trademark, you create a valuable asset for your business. This makes it easier to expand your business and market your products to new markets.

✅ Avoid disputes

Protecting your trademarks can help you avoid a lot of problems.

Researching availability and protecting your trademarks from the start can save you from costly litigation and wasted time and money.

International Trademark Association (INTA) – Atlanta 2024

International Trademark Association (INTA) - Atlanta 2024

Mintbox will be in Atlanta for the 146th edition of the INTA annual meeting

We will be present at the annual meeting of theINTA (International Trademark Association) from May 18 to 22, 2024.

This is the largest gathering of trademark agents around the world. We are taking this opportunity to build and consolidate our relationships with our trusted international partners.

Trademarks and Bill 96 in Quebec : how to comply

The passage of Bill 96, An Act respecting French, the official and common language of Québec (the “Act”), by the Quebec government raises many questions about its many repercussions on businesses.

Here is an overview of the impacts on trademarks in a language other than French in Quebec as well as practical advice for businesses with the steps they will need to take to comply with these new requirements that come into effect on June 1st, 2025.

Registration of trademarks

This Law will have a direct impact on the trademark registration strategy in Quebec. Currently, there is an exception that allows the use, under certain conditions, of a "recognized trademark" (interpreted to include both registered and unregistered trademarks) in a language other than French on products and in public displays.

However, as of June 1, 2025, the scope of this exception will be greatly reduced. Under the new rules, to use a trademark in English or another language, without a French translation, it must:

Be registered within the meaning of the Trademark Law;
Not have a corresponding French version on the trademark register.

If the trademark does not meet these two conditions, it must be accompanied by a French version, so that the French appears in a clearly predominant way.

Given the current delays in obtaining a trademark registration in Canada (the process can easily take more than three years), the requirement to have a registered trademark will certainly be problematic for companies wishing to use a mark in a language other than French in Quebec, without a French translation.

Generic or descriptive terms

In addition, generic or descriptive terms that are not in French, even those included in a registered trademark, will have to be translated into French.

Consequently, it will be forbidden to use generic or descriptive terms in a language other than French on a product without translating them, even if a trademark is registered with OPIC. Companies seem to have some flexibility in how they provide the French version, however, as long as it appears permanently on the product or on a medium permanently attached to it.

Public signs or posters visible from outside premises and commercial advertising

Bill 96 also has implications for public signs and businesses commercial advertising.

In addition to the conditions mentioned above, trademarks in a language other than French, even if they are registered, must be accompanied by a generic term or a slogan in French. The latter must be "clearly predominant" in relation to the trademark.

What can businesses do to comply with Bill 96?

In order to avoid sanctions, companies that use trademarks in a language other than French can take several preventive measures. A proactive approach will avoid delays, additional costs and fines in the event of non-compliance with the new rules. Here are some recommendations:

Draw up an exhaustive list of existing or future trademarks used in a language other than French;
Ensure that all trademarks used are registered if they are not in French;
Consult a trademark agent to develop the best strategy;
Quickly file applications for unregistered trademarks;
Establish a list of goods and services using the Canadian Intellectual Property Office (CIPO) Goods and Services Manual in order to speed up the registration process;
Review trademarks (registered or pending) containing generic or descriptive terms, to assess what will need to be translated.

Conclusion

In conclusion, Bill 96 will have a significant impact on the management and use of trademarks in Quebec. Businesses will need to take steps to comply with the new requirements to stay compliant with the law. It is recommended to ensure that trademarks are registered or that applications for registration are filed as soon as possible so that they can reach the registration stage before the entry into force of the new regulations (June 1st, 2025).

Is your business affected by these changes? Do not waste time and file your trademark applications as soon as possible, given the current deadlines with the Canadian Trademark Office (CIPO).

For any questions on the impacts of Law 96 on trademarks, we invite you to contact our team of experts for assistance in developing an optimal strategy and a better understanding of new requirements.

5 reasons to register your beer or brewery brand

Learn more

International Trademark Association (INTA) – Atlanta 2024

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Description of goods and services in Canada

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Description of goods and services in Canada

As we saw in our previous article, when it comes to prepare a registration request trademark, the choice of products and services that will be included is very important.

The Canadian Regulations require statements of goods or services to describe each of those goods or services in a way that identifies a specific good or service and must be classified according to the nice classification system.

L'Canadian Intellectual Property Office (CIPO) is (much) more demanding than other Offices as regards the specificity of the description of goods and services. Indeed, many terms acceptable in other jurisdictions are not generally considered acceptable in Canada and class headings are not sufficient. The Canadian examiner will require that the goods and services be described according to Canadian standards.

The following problematic examples are widely used internationally:

“Apparel” is an ordinary trade term, but it does not identify a specific product. Examples like “casual clothing” or “children's clothing” would be acceptable choices since the type of functional clothing was provided.
"Software" without further specification would give the applicant an unreasonably broad scope of protection. In general, the specific function of the software and the field of use (if not obvious) should be indicated.
“Medical or pharmaceutical products” shall specify the disease, type of disease, disorder or condition to be treated, or indicate the specific type of drug.

The following three-pronged test is applied to determine whether the list of goods and services is considered specific enough:

Are the goods or services specific enough to determine whether the mark gives a clear description of the nature or quality of the goods or services?
Are the products or services specific enough to ensure that the applicant will not obtain too broad a protection?
Are the goods or services specific enough to assess confusion?

CIPO has posted its Products and Services Manual. There you will find various examples of acceptable descriptions and pre-approved terms.

5 reasons to register your beer or brewery brand

Learn more

International Trademark Association (INTA) – Atlanta 2024

Learn more

Trademarks and Bill 96 in Quebec : how to comply

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Specificities in Canada – What to watch out for?

Specificities in Canada - What to watch out for?

The regulations and formalities relating to Canadian trademarks are very strict and often misunderstood by applicants and foreign agents.

Here are examples of the most common obstacles and tips for avoiding or overcoming them.

Lack of distinctiveness

Since the new Canadian Trademarks Act came into force on June 17, 2019, the Office has significantly tightened the rules on distinctiveness. Examiners may oppose an application for registration on the grounds that the trademark is not inherently distinctive and therefore cannot fulfill its purpose of distinguishing the goods and services of an applicant from those others.

Here are some examples of marks that are generally considered to lack inherent distinctiveness in Canada:

A person's surname or name
A clear or false and misleading description in the English or French language of the quality, nature or provenance of the goods and services
The name in any language of one of the products or services
The geographical locations
Generic drawings
Color names
Trademarks consisting of one or two letters or numbers
glowing terms

It is also important to note that a mark consisting solely of a combination of one or more of these elements will be considered non-distinctive.

Fortunately, in many cases, there are still ways to overcome these types of objections. In particular, it is possible to present arguments demonstrating that the trademark has an inherent distinctive character or to prove that the mark was distinctive on the date of filing (acquired distinctive character).

Products and services

The Canadian Regulations require statements of goods or services to describe each of those goods or services in a way that identifies a specific good or service and must be classified according to the Nice Classification System.

L'Canadian Intellectual Property Office (CIPO) is (much) more demanding than other Offices as regards the specificity of the description of goods and services. Indeed, many terms acceptable in other jurisdictions are not generally considered acceptable in Canada and class headings are not sufficient. The Canadian examiner will require that the goods and services be described according to Canadian standards.

The following problematic examples are widely used internationally:

“Apparel” is an ordinary trade term, but it does not identify a specific product. Examples like “casual clothing” or “children's clothing” would be acceptable choices since the type of functional clothing was provided.
"Software" without further specification would give the applicant an unreasonably broad scope of protection. In general, the specific function of the software and the field of use (if not obvious) should be indicated.
“Medical or pharmaceutical products” shall specify the disease, type of disease, disorder or condition to be treated, or indicate the specific type of drug.

The following three-pronged test is applied to determine whether the list of goods and services is considered specific enough:

Are the goods or services specific enough to determine whether the mark gives a clear description of the nature or quality of the goods or services?
Are the products or services specific enough to ensure that the applicant will not obtain too broad a protection?
Are the goods or services specific enough to assess confusion?

CIPO has posted its Products and Services Manual. There you will find various examples of acceptable descriptions and pre-approved terms.

Confusion

It is recommended to perform a availability search before designating Canada in an international application since, unlike other offices, theCIPO searches for prior rights during the examination phase.

The purpose of the search is to determine whether the mark is confusing with a registered mark or a previously filed application (taking into account the priority dates of the Paris Convention).

During this search, they also check whether the mark is composed of an “official mark” or whose resemblance is such that it could reasonably be confused with an “official mark”. An official mark is a mark that has been registered by the government or a public authority.

IMPORTANT: In Canada, confusion is assessed based on French and English speaking consumers. It is therefore necessary to carry out the search for availability in French and in English.

Colors

In Canada, a black and white trademark will cover a trademark for any color combination. Conversely, a trademark in colors will be limited to those and will require a description of the colors that are displayed and where those colors apply.

IMPORTANT: It is not mandatory to use a PANTONE® color description or very specific colors to identify the various shades. Such a specific description would have the effect of limiting the protection afforded by the trademark registration.

Translations and transliteration

In Canada, any trademark application containing a word in a language other than French or English must include a translation of this word or an indication that it has no translation. Likewise, any trademark application containing non-Latin characters must include a transliteration of each of these characters.

Appointment of a Canadian agent

It is important to remember that CIPO will send all of its notices and notifications directly to the applicant of the international application unless a Canadian agent is named on file to represent him.

Endless delays

There are currently impressive processing delays in the examination process in Canada. The processing times for Canadian applications are more than 3 years for national applications and between 12 to 18 months for international applications (Madrid Protocol).

Interestingly, some options are available to expedite the review of applications by invoking limited and pre-established grounds. It may therefore be beneficial to check whether your international application designating Canada qualifies for this expedited review.

These very specific situations in Canada confirm that it is in your best interest to involve your Canadian trademark agent as early as possible in the trademark registration process in order to avoid objections that would delay the process or lead to failure. demand.

It will be our pleasure to assist you with the evaluation of the risks of refusal or objections and thus avoid foreseeable obstacles during the trademark registration process.

5 reasons to register your beer or brewery brand

Learn more

International Trademark Association (INTA) – Atlanta 2024

Learn more

Trademarks and Bill 96 in Quebec : how to comply

Learn more

Should I protect my trademark internationally?

With the reality of today's global and online marketplace, international trademark protection is increasingly critical.

Is my Canadian trademark registration valid elsewhere?

No. Registering a trademark in Canada does not protect it abroad. Trademarks must be registered in each jurisdiction. Although having a trademark registered in Canada may facilitate the process in other countries, a separate application must be filed in each of the countries of interest.

The majority of countries have a first-to-file system, i.e. even if you use your trademark in certain countries without having registered it, a third-party filing it could prevent you from using it in this market and force you to have to change your trademark.

As your business expands beyond Canada (new markets or overseas suppliers and distributors), you will need to protect your trademark by filing for registration in the relevant countries.

Why is it important to protect my trademark internationally?

When your business strategy involves exporting or manufacturing internationally, protecting your trademark quickly can save you a lot of trouble.

Your trademarks, including your company name, product or service name, logo, slogan, or even the shape or packaging of your products, can be among your company's most valuable assets. It is crucial to protect them adequately.

Registration in another country allows you to obtain the monopoly on the use of this mark in this country and to prevent a third party from obtaining it for you.

As trademark rights are territorial, i.e. they are granted country by country, the mere fact of owning a trademark registration in Canada or the United States does not protect your trademark in other countries.

Moreover, in most countries, the only way to acquire recognized trademark rights is to file a trademark registration, which is often given to the first filer regardless of the commercial use of the mark. This means that even if you are using your trademark for commercial purposes, if you did not apply for trademark registration abroad soon enough, someone else may legally own the trademark in a particular country. .

Finally, registration in another country generally makes it possible to obtain customs surveillance in an attempt to prevent the circulation of counterfeit products.

What if someone else registers my trademark in a foreign country?

If a third party registers your trademark in a foreign country before you do, it could cause a lot of problems. Here are examples of the risks of neglecting the protection of your trademark internationally:

You may lose the right to use your trademark and be forced to change your name in the targeted country
You may be violating someone else's rights without knowing it.
The foreign applicant may hold the trademark hostage and you may be forced to buy back (at a high price) your own trademark if you are the victim of an IP theft that cannot be proven
The foreign depositor may disrupt the manufacture, shipment or distribution of your products in or from the country in question
The foreign owner may use or authorize others to use the mark on a competing or copied product of lesser quality and thus damage your reputation

How to avoid this? You must register your trademark without delay in the country concerned and monitor.

How do I know where to drop off?

Essentially, overseas filing considerations are largely business decisions. It is recommended to protect the brand in countries where:

You offer or plan to offer your products and services.
Revenue streams or consumer bases are important to your business.
You manufacture your products.
You have commercial activities in progress or in negotiation. For example, distributors, partnerships or manufacturers.
The risk of counterfeiting, copying or piracy is high. We are talking here about “defensive” deposits in countries such as China, Brazil and India.
The relevant market for your products and services is expanding or already large.

We invite you to provide us with the list of countries of interest so that we can establish the best filing strategy as well as a quote.

How can I register my trademarks worldwide?

Since there is no “global” or worldwide trademark registration, it can be very expensive to protect your trademark anywhere in the world.

However, it is possible to protect your trademark worldwide nationally (country by country) or using different international treaties. Indeed, there are agreements allowing protection in several countries simultaneously, including the Community trademark (covers all the countries of the European Union), registration with the OAPI (covers 16 African countries), registration with the ARIPO (covers 10 African countries) or an international registration at WIPO.

Indeed, registration abroad has been simplified by the Madrid Protocol, which is an international system administered by theWorld Intellectual Property Organization (WIPO).

It is therefore possible to register a trademark with WIPO by selecting specific countries or by choosing to protect your trademark in all the countries concerned. It is important to know that although registering a trademark through the Madrid system can be more cost effective when considering multiple countries, it can still cost tens of thousands of dollars to register a trademark with the PMOI.

What is "priority"?

Priority is an advantage that allows you to file the trademark in your country of origin (at first) and wait 6 months before filing the application elsewhere in the world by claiming the priority of the initial application. In other words, this strategy makes it possible to protect the trademark in the countries of interest, retroactively, as if it had been filed at the same time as the initial application.

This strategy offers trademark owners six months after the initial application to finalize their international trademark strategy and allows them to spread the costs of filing an application in more than one country while benefiting from the the original request.

Foreign registration applications can be filed at any time and it will still be possible to file the mark elsewhere in the world after the expiry of the priority period, but at the risk that it has already been filed by a third party.

The importance of planning well

In conclusion, integrating exporting into your business strategy requires rigorous preparation, particularly from a legal point of view.

The planning of the protect your brand internationally from the start (ideally within the 6 month priority period) can save you a lot of time, money and unnecessary hassle.

This is why it is suggested to surround yourself well in order to follow the legal advice of professionals.

To take advantage of a free first consultation to benefit from our fixed price packages adapted to SMEs, contact us.

5 reasons to register your beer or brewery brand

Learn more

International Trademark Association (INTA) – Atlanta 2024

Learn more

Trademarks and Bill 96 in Quebec : how to comply

Learn more

My trademark is already registered, now what?

Good news! If you have registered your trademark, you already understand that trademarks greatly contribute to the value of a company and the importance of protecting them.

However, you should always keep the following in mind:

It's important to use your mark correctly because if you don't, it can be unregistered. Genuine use implies that the mark must appear on the goods or when performing the services. It is also strongly recommended to keep an archive file of evidence of use.

Affix the marking correctly. Once the trademark is registered, you will have the option of affixing publicly recognized symbols such as ® (Registered) or MD (Marque Déposée). Since these symbols are reserved for registered trademarks, the symbols MC (Trademark), TM (Trademark) must be used for unregistered trademarks. All of these symbols indicate to the public that you are the owner of the mark in question. It is therefore highly recommended to add them now.

You must not forget to renew your brand. A trademark registration expires after ten years in Canada and in most countries around the world. Luckily, it can be renewed as many times as you want by paying the renewal fee.

Stop any unauthorized use without delay. Set up a brand monitoring in order to keep an eye on the use or registration of trademarks identical or similar to yours in order to react quickly.

Ignore official-looking solicitations from malicious organizations regarding trademark registrations. If you receive an invoice concerning your trademark registration, do not hesitate to contact us in order to verify the information received.

Consider making a audit annually and produce new applications as needed. In the following cases, it may be useful to protect the mark with the help of a new application or the extension of a registration:

- New trademarks

You have to think about protecting any new trademarks that may be developed for your products or services.

- Modification or new logo

It is necessary to file a new application when your logo undergoes substantial changes or a complete metamorphosis.

- New products or services

Under certain conditions, it is possible to extend the protection of your current registrations to add new products and services offered.

- New country

It is recommended to protect the brand in countries where:

- - You offer or plan to offer your products and services.
  - You manufacture your products.
  - You have a distribution agreement in progress or in negotiation.
  - The risk of counterfeiting or piracy is high.
  - The market for your products and services is expanding.

Your trademarks are valuable. They deserve the best protection. Our trademark agents will team up with you to help you maintain the protection of your registrations.

5 reasons to register your beer or brewery brand

Learn more

International Trademark Association (INTA) – Atlanta 2024

Learn more

Trademarks and Bill 96 in Quebec : how to comply

Learn more

Everything you need to know about the trademark registration process

Everything there is to know about the trademark registration process

There are three main steps to obtain the registration of a trademark: The search for availability, the filing of the application and the registration procedure.

Availability search

The first step in the trademark registration process is to complete a availability search. The purpose of the search is to make sure that the mark will not cause confusion with the mark of a third party and to try to foresee the obstacles that the latter might face during registration.

Preparing and filing of the application

Once we have confirmation that the way is clear, it is now time to prepare and submit the application for registration. It is important to know that, according to current deadlines, the registration process can take more than 30 months.

The application must be filed in conjunction with the products and services with which the mark is currently used and intended to be used.

The goods and services covered by a trademark must be grouped according to an international classification system comprising 45 classes of goods and services. The costs for preparing and filing a trademark registration application thus depend on the number of classes of goods and services covered.

Application Review

The application is reviewed by an examiner who will determine if it meets all the requirements and if there are grounds for refusal. He can then issue a review report if he has any objections to raise or if additional information or clarifications are needed. The most common objection is a more precise description of the goods or services covered by the request. The other most common issues are distinctiveness objections or likelihood of confusion rejections (meaning the examiner thinks your mark is too similar to another mark). L'CIPO gives us 6 months to respond to a review report and attempt to overcome the objection.

Approval and publication for opposition

Once the issues have been resolved (if any), the application is officially approved and published in the Trademarks Journal for opposition. Third parties then have, for a period of 2 months, the possibility of opposing the registration of your mark.

Registration and renewal

Once the trademark is duly registered, it is the responsibility of the trademark owner to to watch and to enforce its rights against potential infringers. It is also his duty to ensure that he uses the mark appropriately and renew registration every 10 years.

We are licensed trademark agents with expertise in drafting and prosecuting trademark applications as well as managing and defense of trademarks.

Our trademark agents will team up with you to help you through the registration process, which can be long and complex.

514-612-8896

5 reasons to register your beer or brewery brand

Did you know that behind every beer there is a trademark that must be unique, memorable and distinctive? Why protect your names and logos?

No one wants to change their name mid-stream. Questions ?

Articles that might interest you

Articles that might interest you

International Trademark Association (INTA) - Atlanta 2024

Mintbox will be in Atlanta for the 146th edition of the INTA annual meeting

Need a trusted partner in Canada?

Trademarks and Bill 96 in Quebec : how to comply

The passage of Bill 96, An Act respecting French, the official and common language of Québec (the “Act”), by the Quebec government raises many questions about its many repercussions on businesses.

Make sure you can use your trademark in Quebec!

Articles that might interest you

Articles that might interest you

Description of goods and services in Canada

Do you have doubts about the description of goods and services when filing a trademark in Canada?

Articles that might interest you

Articles that might interest you

Specificities in Canada - What to watch out for?

Lack of distinctiveness

Do you have doubts about the trademark your client wishes to register in Canada?

Products and services

Stay on the lookout for changes in your clients' Canadian trademark applications.

Endless delays

Articles that might interest you

Articles that might interest you

Should I protect my trademark internationally?

With the reality of today's global and online marketplace, international trademark protection is increasingly critical.

Is my Canadian trademark registration valid elsewhere?

Why is it important to protect my trademark internationally?

What if someone else registers my trademark in a foreign country?

How do I know where to drop off?

How can I register my trademarks worldwide?

What is "priority"?

The importance of planning well

Make sure your brand stays yours, wherever your business takes you!

Articles that might interest you

Articles that might interest you

My trademark is already registered, now what?

Good news! If you have registered your trademark, you already understand that trademarks greatly contribute to the value of a company and the importance of protecting them.

Focus on what you love and let us take care of your trademarks.

Articles that might interest you

Articles that might interest you

Everything there is to know about the trademark registration process

There are three main steps to obtain the registration of a trademark: The search for availability, the filing of the application and the registration procedure.

Focus on what you love and let us take care of your trademarks.

Articles that might interest you

Articles that might interest you

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