The trademark may consist of a name, slogan, symbol, logo, packaging or other distinctive element (or a combination of these elements). It serves to identify and distinguish the source of origin of the products or services of one company from another.

Exclusivity and protection across the country

L'trademark registration gives the owner rights to the exclusive use of its trademark throughout Canada. An unregistered trademark has geographical limitations and its protection will be reduced to areas where it has been used enough to be recognized by the public.

Reduces the burden of proof in the event of a dispute and facilitates legal recourse

In litigation, the registered owner does not have to prove ownership over their mark. Using an unregistered trademark can lead to a long and costly legal battle over who has the right to use or register it. Additionally, only the owner of a registered trademark can sue for infringement proceedings in the Federal Court of Canada.

Discourages others from using your brand

The registered trademarks appear in trademark databases used for availability searches. The display of a mark on the register therefore also serves as a brake for third parties who might consider adopting an identical or similar mark.

Free monitoring

Once the application for registration filed, the Canadian Intellectual Property Office (CIPO) will refuse any trademark application that could create confusion with a previously registered trademark.

Domain names

Registration is direct proof of ownership, and can be essential in protecting or recovering an Internet domain name (URL).

Impacts on international protection

Facilitates trademark registration abroad

Ability to obtain trademark registration in other countries without having to prove sales as required in some countries.

Allows you to benefit from priority (6 months)

It is possible to file the trademark in Canada (initially) and wait 6 months before file the application elsewhere in the world by claiming the priority of the Canadian application. This strategy makes it possible to spread the costs relating to the filing of an application in more than one country while benefiting from the date of filing of the Canadian application.

In short, to validate and protecting your brand from the start is an inexpensive process that could save you time, money and unnecessary stress. A registration is the best weapon and the best protection for your brand.

L'set of these symbols indicate to consumers and competitors that you own the mark in question.

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.

The MC or TM symbols may be used in association with marks whether or not an application for registration has been filed. It is therefore highly recommended to add them now.

Trademarks must be registered country by country. As your business grows, it is important to keep this information in mind. During the strategic discussion process, we will help you prioritize and choose the scope of your international protection.  

There are three main steps to obtaining trademark registration: availability search, 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 whom the mark is intended to be used and currently 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 products 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). CIPO gives us 6 months to respond to an examination report and try 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 has been duly registered, it responsibility of the brand owner to monitor 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. 

The mere fact of being incorporated offers no protection for your name.

Your trade name identifies your business name but does not provide rights to use it in trade. It is the trademark that will allow you to obtain exclusivity on the use of your name and infringement remedies throughout Canada.

Yes. It is possible to file a trademark application without the help of an expert. However, registering a trademark is quite a complex legal process and filing errors can have unintended consequences and can result in wasted time and money. Indeed, the majority of trademark applications filed without an agent do not adequately protect the company's activities or fail completely. As even the most minor error can lead to rejection or significant delays, it is crucial to prepare the application well.

A trademark agent can help you throughout the trademark registration process which can be long, cumbersome and sometimes complicated. 

If you filed your application yourself and you encounter a problem along the way, we can always intervene to help you.