Sep

5

Trademark Law in Canada: Part 2 – More on Trademarks

Trademark Law in Canada

Trademark Law in Canada

Please keep in mind that this is not legal advice. The information provided herein is for educational purposes only. If you would like to get in touch with a Canada trademark lawyer to help you with your application or trademark dispute, then you are encouraged to seek a professional (e.g. make a post on Dynamic Legal Forms).

As a follow up to my blog post about Trademark Law in Canada, I thought I would continue the discussion by addressing some common issues people have about trademarks. Remember: you can make a post on Dynamic Legal Forms or contact me directly if you need to start a trademark application. The price is $1500 (includes GST but does not include government fees of $250) to prepare and file the initial application. This covers the initial interview/research, preparing the application, and filing it on your behalf.

With these things said, let’s get into the nitty-gritty:

Does incorporating a business protect my name or logo?
Nope. Worth mentioning is that, depending on which jurisdiction you incorporate in, the government may prevent you from selecting a name because it is too confusing or similar to an already existing name – be it a trademark, another corporate name, a registered business name, etc. In the event that the government goes ahead and allows the incorporation, there is nothing to prevent another business – be it a sole proprietorship, partnership, corporation, etc – from challenging the use of your corporate name on the basis that that name is too similar or confusing with its name in relation to products and services that both of you are selling. So incorporating cannot protect you in the way that trademarking can. If you are relying on being incorporated to afford you adequate protection, think again!

How long does a Trademark registration last?
Once your trademark application has passed all the procedural hurdles, you will be entitled to register your trademark for 15 years (s. 56(1) of the Trademark Act). After that, you will need to renew your trademark registration or risk losing it. There is a small government fee (of either $350 if done online or $400 if done offline) that goes along with the initial registration and renewal.

Who can own a Trademark?
A “person” can own a trademark, which includes individuals, sole proprietorships, partnerships, corporations, not for profit corporations, etc. So a “person” means a legal person. FYI, the Trademark Act also states that a “person” includes a lawful trade union or lawful association.

How do you select a good Trademark?
The way to select a good trademark is to do your research and be able to describe the wares and services related to the trademark in such a way that will be acceptable to the Canadian Intellectual Property Office. We begin with researching. The first thing to do is to check if your proposed name is similar to any currently registered or pending trademarks. You can do this by visiting the trademark database website and punching in your trademark. If you have a logo, you’ll need to hire a trademark agent in Ottawa (where CIPO is) who has access to their database so that they can compare your proposed design to others in the database.

What do I need to include in my Trademark Application?
Your trademark application will consist of:

  • A cover letter addressed to the Canadian Intellectual Property Office requesting registration of a trademark;
  • Contact information for the person applying for the trademark;
  • The proposed trademark (word, logo, design, etc.);
  • The wares (i.e. products) and services associated with the trademark – either actually in use or proposed in Canada;
  • A filing fee of $250 if done online (otherwise, it’s $300);
  • The contact information of a trademark agent (if one is filing the trademark on your behalf).

What happens after you file a Trademark Application?
After you file a trademark and pay the government fee, the following steps take place:

  1. The Canadian Intellectual Property Office (“CIPO”) will contact you if information is missing.
  2. If nothing is missing, CIPO will issue a filing date and application number.
  3. CIPO then examines the proposed trademark in light of other registered trademarks.
  4. There are a number of grounds upon which CIPO will write back to you, contesting your proposed trademark. Those grounds are quite complicated and are the discussion of another blog.
  5. If there is a problem, you will have up to a certain date to either make amendments to your application or respond to the examiner’s arguments and explain why he/she may be wrong. Interestingly, you can always freely amend your statement of wares and services to be more narrow in respect of what you originally filed, but you cannot extend them beyond that original scope without paying a fee of $450 (it is viewed under s. 41(2) of the Act an application in itself!). If they accept your arguments, the examiner will withdraw their challenges. IF they do not, you can hire a lawyer to appeal their decision to the Federal Court of Canada.
  6. Many claims get abandoned due to failure to respond within the timeline or at all! Make sure to have a lawyer review and respond within the appropriate timeline.
  7. If the examiner is satisfied with your trademark application, it will be advertised in the Trademarks Journal. The government used to charge $1150 for a subscription to the journal, but now offers it for free on CIPO’s website.
  8. After your proposed trademark is advertised, there will be a 2 month period during which third parties (specifically “any person” may do so) can contest the registration of your trademark. Such party must pay $750 to file a statement of opposition. If this happens, you will be notified and have the opportunity to make arguments to CIPO or amend your application.
  9. If third party opposition to your trademark is unsuccessful, abandoned, or resolved in your favour, then your application will be allowed to be registered. To register, you must pay a fee of $200. You will receive a Registration Certificate, which shows proof that your trademark has been registered in Canada.

This whole process could take anywhere from 1 to a number (e.g. 10 years). It is a complex area and professional assistance should be sought from the get go to avoid wasting time and money in the long run and getting the trademark properly registered.

Can I profit from having a Trademark?
As the owner of a registered trademark, you can sell/transfer/assign or license out the trademark. Remember: a trademark is an asset that has a long-lasting benefit. Goodwill can grow in the trademark if the brand is recognized and the strong in a particular geographic area or for a particular product, service, or idea. Licensing gives someone other than the owner the right to promote products, services, and ideas using the trademark. Franchisors, for example, typically include the right for a franchisee to use their trademark as part of the overall franchise agreement.

How do I protect my registered Trademark?
To protect your trademark, you need to be mindful of proposed trademark applications that may be confusing or similar to your own, or violate other trademarking requirements/rules. Just be sure to either check (or have a lawyer check) the Trademarks Journal and hire a lawyer to contest these proposed trademarks.

How do I get a Trademark in other countries?
You will need to inquire into those jurisdiction’s trademark laws and procedures. Remember: trademark protection is geographical. Just because you have a registered trademark in Canada does not translate into you having trademark protection anywhere else. As such, you should apply to register in other countries and you should do so early (because trademarking can take years before a final determination is made to allow the trademark to be registered)!

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