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.