Is registering a trademark in Canada complicated?

Registering a trademark in Canada is not that difficult. However, it is not mandatory, since trademark rights are created by use. A company or a person who first uses the mark, on a continuous basis, benefits from the trademark right. However, there are many advantages to registering a trademark in Canada. The registered trademark benefits from a presumption of ownership.

Canada does not depend on the Madrid system. Therefore, it is not possible to designate this country under an international trademark. A Canadian brand is therefore filed directly with the Canadian Intellectual Property Office (CIPO). What are the particularities of the Canadian brand ? How to submit a brand in Canada ?

The Canadian brand in a few words

Canada, like France, distinguishes between different brand types. In particular, it is necessary to choose between the "word" mark (word mark, consisting of one or more words) and the "design" mark (figurative or semi-figurative). It is thus possible to register a name, a logo, a drawing or a slogan. The Canadian Office also accepts sound marks. However, it does not currently register marks that consist solely of odours or colours.

As in the United States, use is fundamental to the brand in Canada. Indeed, more than its registration, it is the use of the trademark that confers a right. At the time of filing, it is thus necessary to prove actual or intended use. Nevertheless, registration is still important: it makes it possible to prove the trademark owner in a dispute. The owner of a registered trademark can also use it more easily.

To do this, the brand in Canada. But, what are the steps to follow?

How do I register a trademark in Canada?

Making a deposit of brand in Canada requires several phases:

The search for anteriorities

The first step is to make sure the brand is available. This is to ensure that the trademark to be filed does not create confusion with an earlier trademark or trade name. A background check will verify that there is no identical and/or similar trademark. This can be done by the applicant or by a professional representative.

Preparation of the repository

The second step is to fill out a brand in Canada. This form contains the following information:

• The name and full mailing address of the applicant ;
• The trademark (with, if necessary, the official drawing) ;
• The list of products and services. Since Canada is not a signatory of the Madrid system governing the international trademark, it does not use the Nice Classification;
• A statement specifying past, present or future (projected) use of the brand in Canada. This statement must mention the goods and services being exploited and, if possible, the date of first use of the mark ;
• Where the mark has already been filed outside Canada, a copy of the application or registration will be required;
• Application fees. These fees will not be refunded, even if the procedure is abandoned.

There is no time limit for filing an brand in Canada. However, it is preferable to file quickly.

Registration of the Canadian trademark as such

It is carried out at theCIPO by mail or online. A company or individual with a Canadian address can register a mark directly with CIPO. If the applicant resides in another country, they must appoint an agent.

The Trademark Office will then proceed with the examination of the application. If the application is accepted, the mark will be published in the Trade-marks Journal. A two-month opposition period then begins. If no one objects, the mark is then registered.

The registration of the mark is valid 15 years old...renewable indefinitely. It protects the trademark in the event of a dispute, while providing it with additional value. But it does not replace the serious use that must be made by the owner.

Using a Industrial Property Attorney makes it easy to drop off a brand in Canada.

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