Planting Your Flag in the North: How to Trademark in Canada

Steve Forbes, CEO of Forbes Media, once said that the most valuable asset of a company is its brand. Your brand isn't just a logo; it's a promise. It represents trust and reputation. A good brand is the product of years of commitment to continual reinvention, striking chords with people to stir their emotions. Trademarking your brand ensures that your years of commitment and creative efforts are protected from commercial hijackers.

If you're intent on safeguarding your products or services from fraud and counterfeiting in Canada and avoiding the economic loss that comes with brand theft or infringement, you've made the right stop. In this article, we'll guide you through trademark registration in Canada. We'll cover the types of marks you can register and the main processes involved. We'll also explain why Trademarkia is your best shot at protecting your brand in Canada.

What is a trademark?

“Registering your trademark in Canada not only provides you with nationwide trademark protection but also grants you the right to exclude others from using your trademark in Canada. In addition, trademark registration strengthens your ability to enforce your trademark rights if someone uses your trademark without authorization.” - Queena Zhang, Trademarkia Lawyer Licensed in British Columbia and Ontario (This is not legal advice).

The Canadian Trademarks Act defines a trademark as a sign or a set of signs that helps people identify their goods or services from those of others. These signs can be many things. They may be a word, a name, or a design. They can also be a letter, a number, or a color. Additionally, signs might include a shape, a hologram, or a moving image. They can represent packaging, a sound, a scent, a taste, or a texture. 

A registered trademark sets your products or services apart from those of competitors. It also safeguards your brand against fraud and counterfeiting. It helps customers recognize your products and services and gives you the legal right to stop others from using a similar mark.

What is the process of registration?

The process of registering a trademark in Canada is overseen by the Canadian Intellectual Property Office (CIPO). The CIPO is responsible for the registration and management of all forms of intellectual property in Canada, including trademarks. 

This registration process can be frustrating for beginners and laypersons due to its complexity. In light of this complexity, we have broken down the entire registration process into key easy-to-follow steps below:

Step 1: Selecting a registrable name

For a mark to be registered by the CIPO and gain legal protection, it must be new in relation to the goods or services in that market. It also needs to make a clear distinction between your goods or services and others.

In Canada, not all marks are registrable by the CIPO. Certain marks are normally rejected upon application for registration because they fall under one or more of the following categories: 

• Name or surname: A trademark may not be registered if it's nothing more than a name or surname. An exception is if you can prove that your goods or services have become well known under the name or surname so that the word has acquired a second meaning in the public mind.
• Descriptive marks: You may not register a trademark that clearly describes a characteristic or quality of your goods or services. For example, the words "sweet" for ice cream or "juicy" for apples couldn't be registered as trademarks. However, if you can establish that "Sweet Ice Cream" has become so well known that people will immediately think of your product (and no one else's) when they read or hear these words, you may be allowed to register the trademark.
• Deceptive or misleading marks: You cannot register a trademark that is deceptively misleading. For example, "cane sugar" for candy sweetened with artificial sweetener.
• Marks that describe a place of origin: You may not register a trademark that describes the geographical location where the goods or services come from. For example, you couldn't register "Italy" for lasagna.

Also, you can't register a word that misleads the public into thinking that the goods or services come from a certain place when they do not. For example, "Paris Fashions" or "Denmark Furniture" as a trademark for goods or services that don't come from there.

• Marks that are similar to registered or pending trademarks: If your trademark is confusingly similar to a registered trademark or a pending trademark, it will be refused.
• Marks that are identical or similar to official marks: You can't register a trademark that is identical or similar to certain official marks unless you have permission from the organization that controls the mark. These official marks include: official government designs (e.g., the Canadian flag), coats of arms of the Royal Family, badges and crests such as those of the Canadian Armed Forces and the letters RCMP, emblems and names of the Red Cross, the Red Crescent, and the United Nations, armorial bearings (coats of arms), flags and symbols of other countries, and symbols of provinces, municipalities and public institutions
• Scandalous, obscene, or immoral marks: For example, a trademark that includes profane language, obscene visuals, or racial slurs.
• Portraits and signatures of living people or people who have died within the last 30 years.

Step 2: Selecting the right classification for your mark

The Canadian Trademarks Act requires goods and services to be classified into their right classes during registration. The Canadian trademark regime applies the Nice Classification System when processing trademark applications to ensure consistency with the international trademark classification standards. This system is recognised globally. 

The Nice Classification simplifies how goods and services are classified for trademark registration. There are a total of forty-five classes. The first thirty-four are for goods, and the last eleven are for services. The class you choose for a trademark depends on the goods or services you want to protect. 

Finding the right class can be tough for beginners and first-time applicants. At Trademarkia, our attorneys can assist you in choosing the right options. We can ensure your business is protected from every angle. We have also worked on a detailed Nice Classification System Guide that might assist you in your decision-making. This guide applies to all jurisdictions that have adopted the Nice Classification System into their internal trademarks regime, including Canada.

Tips for selecting the right trademark class:

• Be specific: Your trademark description should clearly show what your products or services are.
• Think ahead: If you plan on expanding your business, it's wise to file for additional classes to accommodate your potential trade. This will help you avoid extra costs later.
• Speak to a professional: A trademark attorney can help you choose the right classes for your goods or services. This way, you'll get strong protection for your business.

Step 3: Conducting a search

In order to ensure that your mark is unique to your products or services and that it's not already being used by another business, it's important to conduct a thorough search of the intended mark. Conducting a thorough search of the intended mark is essential to verifying its uniqueness to your products or services and to preventing potential conflicts with existing trademarks. 

The Canadian Trademarks Database allows you to search through active and inactive trademarks, official marks, and prohibited marks.

When conducting your search, check for different possible versions of the trademark you want to register, including alternate spellings and French translations for standard character trademarks (words). For example, a search for "North Pole" would include "North," "Nord," and “Pole.”

Begin your search by visiting the Canadian Trademarks Database and using the provided tutorial to optimize your search.

For broader coverage, you should also consider expanding your search to international databases such as the WIPO Global Brand Database so as to get insights into similar marks registered in other jurisdictions. 

Step 4: Preparing your trademark application

Once you're sure that your mark is unique and distinctive, you need to gather all relevant and necessary information and documentation required by the CIPO to register your mark - these include:

• The name and mailing address of the applicant.
• A representation or description, or both, of the trademark.
• A statement in specific and ordinary commercial terms of the goods and services associated with the trademark.
• The statement of goods and services grouped according to the Nice Classification.
• The application fee.
• Any other requirements specific to the type of trademark sought to be registered.

Step 5: Lodging your application

A single trademark application can include multiple goods or services, but each trademark requires its own application.

In Canada, applications can be lodged either by sending the Trademark Order Form by mail to CIPO or completed through the trademark e-filing platform. For e-filing services, you must be logged into the system with an active user account. 

After receiving your trademark application, the Registrar of trademarks will review it for completeness. If any information is missing, you will be contacted. If the application is satisfactory, you will receive an acknowledgement of receipt and your application will be assigned a filing date. This date is important because it's used to determine who is entitled to registration if there is confusion between co-pending trademarks.

Step 6: Examination 

At this stage, the Registrar of Trademarks examines your application to check whether it satisfies the requirements of the Trademarks Act on distinctiveness and registrability. The examination includes carrying out a search of earlier trademarks. If the requirements for registration aren't met, you'll be informed and given an opportunity to amend the application.

If you fail to amend the application as directed or fail to respond to the request to amend within the period specified in the request, the Registrar will refuse to accept the application. However, if the requirements for registration are met, then the application shall be accepted. If you receive a refusal, you have the right to appeal to the Federal Court of Canada.

Step 7: Publication and opposition

Your trademark application will be advertised in the Trademarks Journal published on the CIPO website every Wednesday. The Journal lists every application that has been approved for advertisement in Canada. It gives information about an application, including the name and address of the applicant, the file number, the filing date, the trademark, and the associated goods and services. This advertisement gives others a chance to object to your trademark before it is registered.

Any person may give notice of their opposition to the registration to the Registrar within 2 months of publication. The notice should be in writing and must include a statement of the grounds of opposition. Most oppositions are normally based on factors such as similarity or claims that the trademark applied for might be misleading or generic.

Should you be faced by an opposition notice, you can handle it by negotiating with the party raising the opposition. This would involve you making concessions, such as tweaking your proposed mark. You can also address an opposition by providing evidence proving that the proposed mark is unique. In case things get out of hand, it's crucial that you hire a lawyer.

Step 8: Registration

If no opposition is raised during the publication period, or if the oppositions raised are resolved, the trademark will be registered in the register of trademarks. You'll then be issued with a certificate of registration signifying exclusive ownership rights of the trademark.

General housekeeping after registration

Trademarks in Canada enjoy protection for a period of ten years from the date of registration. When this period lapses, you must renew your trademark in order to sustain the legal protection it provides. It's advisable to renew your trademark before the lapse of the ten years. To avoid missing out on renewal deadlines, it's important to set automated reminders to avoid missing renewal deadlines. 

Additionally, another of your responsibilities as the owner of a trademark is to use it in Canada. If you don't use it within three years from the registration date, the registration could be expunged from the Register of Trademarks by the Registrar. 

IP without protection has the shelf-life of a banana

Just as a banana must be enjoyed before it overripens, your brand's unique spark deserves swift protection before it begins to wilt under the pressure of competitors. In the fast-paced Canadian commercial space, waiting too long to register your trademark is like letting your prized fruit sit out in the sun. Inevitably, it will lose its prime appeal. 

So, take the bold step, secure your trademark in Canada, and ensure that your legacy remains fresh, vibrant, and unmistakably yours. Seize the moment, and let your brand ripen to perfection under the shield of solid protection. 

At Trademarkia, we understand this. We understand brands. We know that you need the best team around you to leave your mark on the market. We are highly skilled and experienced in the legalities, helping you focus on building your legacy. 

Additional resources

• How Online Trademark Monitoring Can Prevent Brand Infringement
• Common Mistakes to Avoid when Registering a Trademark

Glossary of legal terms

• Trademark: A sign, design, or expression used to distinguish goods or services from those of others.
• Canadian Intellectual Property Office (CIPO): The government agency responsible for managing intellectual property rights, including trademark registration, in Canada.
• Declaration of use: A statement made during the trademark application process affirming that the mark is actively used in commerce.
• Nice Classification: An international system that categorizes goods and services into 45 classes to standardize trademark registration.
• Infringement: The unauthorized use of a registered trademark in a manner that is likely to cause confusion among consumers.
• Opposition: A formal objection filed against a trademark application during its publication in the Trademarks Journal.
• Distinctiveness: A characteristic of a trademark that makes it uniquely identifiable and capable of distinguishing the source of goods or services.
• Registrability: The quality of a trademark that meets legal criteria for registration, including distinctiveness and non-descriptiveness.
• Counterfeiting: The production and sale of goods under a registered trademark without authorization, aimed at deceiving consumers.