Trade mark registration takes place on a country-by-country basis. Although there are some similarities in approach, each country adopts differing requirements for achieving registration. Therefore, it is important to know the peculiarities and idiosyncrasies of individual trade mark offices before you file, to give your application the best possible chance of success.
The Process in Canada
The Canadian Intellectual Property Office (‘CIPO’) is the government agency responsible for examining trade mark applications in Canada. When filing an application in Canada, you can file directly with the CIPO or file a Madrid Protocol application through the World Intellectual Property Organization (‘WIPO’). Suppose your business goals and strategic brand plans include expansion in many countries. In that case, it can often be more cost-effective to include Canada as one of your nominated countries in a Madrid Protocol application.
Either way, your application will eventually be reviewed and considered by an examiner at the CIPO. The examiner may issue correspondence or an initial refusal of your application if they require further clarification about your application or have other questions. You will have an opportunity to respond to any formal notices like these.
Upon acceptance of your application, it will be published in the Canadian Trademarks Journal online for two months. This allows third parties to oppose your application if they have a valid reason. For example, this may be where a third party has been using your trade mark unregistered for an extensive period of time, has built up their own reputation under the trade mark, and would suffer undue hardship if the right to continue using their trade mark was extinguished by your application.
If no one opposes your application, it will proceed to registration. For applications filed after 17 June 2019, there is no additional registration fee payable on top of your application fee. Once registered, you can enjoy exclusive registration rights for 10 years and only need to renew your registration every 10 years.
How Long Does It Take?
Canada’s trade mark application process is one of the lengthiest in the world. Currently, the CIPO estimates that an examiner will review applications within 15 to 18 months from the filing date. Furthermore, keep in mind that if you file via the Madrid Protocol, your application must first proceed to WIPO for processing before being sent to the CIPO, so the length of time before your application is examined will be even longer. Usually, this will add two to three months to the examination process.
Continue reading this article below the formRequirements of the CIPO
The CIPO, like the US Patents and Trademarks Office, has strict requirements for classifying the goods and services you claim in your application. Often, you must provide specificity and precision around the function, type or purpose of your goods and services. For example, the CIPO does not allow you to broadly claim “computer software” as a type of product you provide in connection with your trade mark. Instead, the CIPO will require you to specify the nature and purpose of your software. For example, “downloadable computer software for booking rideshare services”.
The CIPO also does not accept the classification of goods and services using specific terminology. For example, the term “apparatus” is unduly broad. It could capture an extensive array of physical goods used for any purpose. It is a good idea to consult the Canadian classification manual before filing to determine what claims are acceptable.
Unique Examination Considerations
As English and French are co-official languages of Canada, the CIPO will also consider the French translation of any English word mark. The CIPO will examine both translations to determine their similarity with any other pending or registered trade marks.
Canadian Agent
Suppose you choose to apply directly with the CIPO and you are located outside Canada. In that case, you will need to appoint a local Canadian attorney to file your application on your behalf. It will also be important to have a Canadian representative on record should any issues arise with your application. The CIPO will send correspondence to your nominated representative in the first instance. Accordingly, they can then help you formulate a response to the CIPO. Any communication to the CIPO must be through your representative.
Alternatively, if you choose to file via the Madrid Protocol pathway, you do not need to appoint a local attorney to file your application in Canada. Instead, WIPO will send your application to the CIPO after conducting their preliminary examination. However, should your application receive any objections, refusals or oppositions, you must engage a local attorney to represent you and submit a response to the CIPO.
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Key Takeaways
In summary, you should speak to a trade mark lawyer to help you navigate international filing. The Canadian trade mark process has its own peculiarities and idiosyncrasies.
If you need help with filing a trade mark, our experienced IP lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 1300 544 755 or visit our membership page.
Frequently Asked Questions
The Madrid Protocol is an international treaty allowing for an international intellectual property registration system.
The Canadian Intellectual Property Office (‘CIPO’) is the government agency responsible for examining trade mark applications in Canada. When filing an application in Canada, you can file directly with the CIPO if you wish.
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