Before the applicant files for trademark registration in Canada, they must conduct a trademark search to find out whether the proposed trademark is registrable or not. The applicant should take the help of a trademark attorney in conducting a thorough trademark search so that there is no risk of infringing someone else’s trademark. A trademark search also provides the applicant with a list of trademarks that are prohibited from registration. Thus, it is advisable to conduct a trademark search to know whether a brand name or trademark can be registrable or not.
Filing the application
A trademark registration application should be filed before the Canadian Intellectual Property Office (CIPO). The application form can be sent online or by mail or fax. The applicant must include the following details in the application form:
• Name and address of the applicant.
• The proposed trademark.
• Class or classes of goods or services in which the trademark lies.
• The prescribed application fees.
If the details entered in the application are correct, CIPO assigns the date of filing and the application number. The application is then entered in the Canadian Trademarks database as well as in the database run by outside companies. Thereafter, the application is labelled as “formalized”.
If the application has been submitted online, a formal filing acknowledgement and a proof sheet with the details of the information included in the application is sent to the applicant within 7 days. The same takes 20 business days if the application has been submitted through any other method.
Examination
After the application is submitted, it is examined to make sure that the trademark is registrable. If there are minor issues with the application, the applicant may receive a phone call to fix the problem. Where the application has complex issues, the Examiner states the same in the Examiner’s report. The applicant must respond within 6 months of receiving the Examiner’s report. In the case that the application is refused, the Examiner states the reason for such refusal. The applicant has the right to appeal to the Federal Court of Canada against the Examiner’s decision. On approval of the application, CIPO sends a formal notice of approval to the applicant.
Publication
Once CIPO approves the application, it is published in the Trademarks Journal approximately 2 weeks after receiving the approval from the Examiner. The Trademarks Journal is published on a weekly basis on the CIPO’s database. The application is published for a period of 2 months to invite any opposition to the trademark registration within this period. If a third party opposes the registration, then the Trademarks Opposition Board sends a copy of the statement of opposition to the applicant. The applicant may choose to contest the opposition within 2 months of receiving a copy of the statement of opposition by filing a counterstatement. Following which, a copy of the counterstatement is served before the opponent. Thereafter, both parties are given the opportunity to file evidence and written arguments as well as make oral arguments. If the opposition is successful, the applicant’s application may be totally or partially refused. The applicant may appeal to the Federal Court of Canada. If it is successful or the opponent withdraws the opposition, then the application is allowed to be registered
Registration
If the applicant overcomes opposition or if there is no opposition, the application moves toward registration. CIPO mails the certificate of registration, and the trademark is entered in the Registry of trademarks. Thereafter, to maintain the trademark registration in Canada, it must be renewed every 10 years.
