The ABC's of Trade-mark Registration

So you want to register your word, sound, design, certification mark, distinguishing guise or combination thereof (collectively, “mark”) as a trade-mark… Before you enlist the help of a lawyer or trade-mark agent, here is what you can expect.

This article will give you a snapshot of the trade-mark registration process for a mark that is already in use. A smooth trade-mark registration takes about 8-10 months to complete; however, it will likely take longer than 8-10 months if there are any objections or statements of opposition (see below).

1.       Filing

First, you must file an application with the Office of the Registrar of Trade-marks. Separate applications are required for each trade-mark that you wish to file. You should think about what goods and/or services you would like your trade-mark to be associated with – the more detailed, the better.

2.       Examination

An examiner with the Office of the Registrar of Trade-marks conducts a search of trade-mark records to determine whether there are any existing or pending trade-marks with which your trade-mark may be in conflict. If the examiner has any objections to your registration, then you will have an opportunity to respond. In light of your response, the examiner will either refuse the application or proceed to a second, pre-publication search of trade-mark records to ensure that, in the intervening months, no one has registered or applied for registration of a trade-mark that conflicts with yours.

3.       Publication/ Advertisement

If no conflicting trade-marks are found, then your proposed trade-mark and its details are advertised in the Trade-marks Journal (published every Wednesday).

4.       Opposition

Any party that has valid grounds for opposing the trade-mark’s registration has 2 months from the publication date to formally do so.

5.       Allowance

If there is no opposition, or if the opposition has been decided in your favour, then the application is “Allowed” and the Office of the Registrar of Trade-marks will not consider any further challenges to your proposed trade-mark.

6.       Registration

The Office of the Registrar of Trade-marks will request payment of the trade-mark registration fee. After the fee has been paid, it will issue a certificate of registration and enter your trade-mark into the Register of Trade-marks. Until you receive this certificate, the trade-mark has not been registered.

Please note that there are additional steps to consider when registering a trade-mark on the basis of proposed use. The Canadian Intellectual Property Office’s “A Guide to Trademarks” can fill help you fill in the blanks.

Trade-mark registration is an important element of brand protection. Unfortunately, not every mark qualifies for trade-mark protection. Your mark must be used to identify your particular brand of services. Be prepared to prove it! Stay tuned for more information about what can/cannot be trade-marked in Canada.

Also, you should know that the federal government has introduced major changes to the Trade-marks Act in Bill C-31. The amendments are expected to come into force in early 2017. We will let you know more about the amendments in a follow-up article.

How Momentum Can Help

We can register your trade-mark(s) and report back to you at every step of the way. We are also happy to answer any broader questions you may have about trade-mark law in Canada.