Foreign-Related Intellectual Property Lawyer: How to Register a Trademark in Canada? A Complete Guide to the Trademark Application Process

1. Trademark Registration

In Canada, trademark rights do not need to be obtained through registration. However, registration can provide a number of legal benefits, including:

the exclusive right to use the trademark throughout Canada during the term of registration;

the right to prevent others from registering and/or using similar marks throughout Canada that may cause confusion;

the right to bring a statutory trademark infringement claim;

the ability to claim priority for the trademark in other member states under the Paris Convention within six months from the filing date in Canada.

1. Trademark Register

The Canadian Intellectual Property Office (CIPO) maintains a public register containing information on all trademark registrations and applications, which may be searched online.

It is advisable to conduct a search before filing an application, but a CIPO search cannot, by its nature, cover unregistered trademarks or marks for which no application has yet been filed. Therefore, prospective applicants often instruct a trademark agent to carry out a more comprehensive search.

1. Term of Registration

The initial term of a trademark registration is ten years from the date of registration (for marks registered before 2019, the initial term was fifteen years).

The trademark owner may extend the initial term by filing a renewal application. Since 2019, each renewal extends the registration for a further ten years. Renewal may cover all or only some of the goods and services listed in the registration, and proof of continued use is not required at the time of renewal. However, failure to use the trademark for a number of consecutive years after registration may give rise to summary cancellation proceedings.

If renewal is not completed, the trademark will be removed from the register and cannot be restored.

1. Application Requirements

An individual, corporation, or other legal entity may file a trademark application, and one application may include two or more applicants. It is not mandatory to appoint a trademark agent, but this is common practice. Foreign trademark owners are advised to appoint a Canadian trademark agent, as CIPO does not send trademark application-related correspondence to foreign agents.

A trademark application must include the following:

the applicant’s name and address;

a representation and/or description of the trademark;

a statement of the goods and services associated with the trademark in specific and ordinary commercial terms;

the applicable Nice Classification classes for the relevant goods and services;

the application fee;

any other specific requirements applicable to the type of mark to be registered.

If priority is claimed, the Canadian application must also indicate the filing date, country, and priority application number of the earlier application.

The current fee schedule for filing a trademark application can be found on the CIPO website.

1. Commercial Use Prior to Registration

Since 2019, trademark applicants are no longer required to state whether the trademark has already been used in association with the relevant goods or services, nor do they need to indicate the date of first use. However, after registration, if the registrant has not used the trademark for three consecutive years, the registration may be cancelled.

1. Consideration of Prior Rights During Registration

CIPO examines whether a trademark is registrable and searches the register for third-party registrations and pending applications that may be confusingly similar. Canadian examiners also consider the use of unregistered trademarks through online sources and public databases.

1. Cancellation, Amendment, Modification, or Correction of an Application

Certain basic amendments to a trademark application are generally accepted, but substantive amendments to the trademark itself or amendments that expand the scope of the listed goods and services will not be accepted.

1. Division of a Trademark Application

A trademark application may be divided while it is still pending. Where an objection or opposition is raised only against some of the listed goods and services in the original application, the applicant may consider dividing the application.

The filing procedure for a divided application is similar to that of the original application. The divided application must clearly indicate that it is a divided application and must refer to the application number of the original application.

1. Incorrect Information in an Application

Incorrect information in a trademark application may result in refusal of the application before registration, or in invalidation or cancellation after registration.

Such incorrect information may be corrected by filing an amendment request, but there are certain limitations on the types of information that may be amended.

1. Refusal of Registration

A trademark application may be refused if the mark falls within any prohibited ground for registration, lacks required information, or lacks inherent distinctiveness.

Before an application is refused, the applicant will receive an examiner’s objection report and will have an opportunity either to correct the deficiencies in the application or to explain why the objections should be withdrawn. Whether the objections can be overcome depends on their nature.

1. Madrid System

Canada is a member of the Madrid System. An applicant or registrant with a trademark application or registration in Canada may apply for international registration if they are a Canadian national, are domiciled in Canada, or have a real and effective industrial or commercial establishment in Canada. Part 2 of the Trademarks Regulations sets out in detail all procedural requirements for filing an international registration through the Madrid System.

Disclaimer

Laws and procedures may change. This article provides general information only and does not constitute legal advice. If you encounter a legal dispute overseas, please contact us immediately to consult a professional foreign-related lawyer.