Trademark Registration in Canada and Abroad
Trademarks are key assets for most businesses. Trademarks help your customers distinguish your products and services from others in the marketplace as well as associate them with your company and its reputation.
Trademarks include words, designs, combinations of words and designs, and distinctive shapes or wrappings that distinguish your products and services. Your business name or trade name may also be registrable as a trademark if it is used to distinguish your products and services from those of others. Registering your trademarks is an important step as it allows you to better protect your brand against imitation or misuse.
Our Canadian trademark lawyers have over a decade of experience in trademark law. When you apply for a trademark registration with us as your trademark agent, we counsel you on the entire process, from application to registration in Canada and abroad. We have experience supervising and managing clients’ worldwide trademark portfolios and through our network of foreign associates, we obtain trademark agent services in other foreign jurisdictions.
The most common jurisdictions in which our clients wish to register their trademarks are Canada, the United States and the European Union. For applicants based in Canada, we are qualified to directly file trademark applications in the United States for them as their U.S. trademark agent.
We also file Canadian trademark applications for foreign clients and trademark attorneys as their Canadian trademark agent. We detail the information needed for a Canadian trademark application for foreign associates on this page.
For more information about Canadian trademark registration, please see the bottom of this page for a summary of the typical steps in a Canadian trademark application and also check out our additional resources on trademarks on the right side of the page.
If you have any questions about our services or you are in need of trademark services not specifically described here, please do not hesitate to contact us for a complimentary and confidential telephone appointment with a trademark lawyer.
We can arrange a trademark search in Canada and advise on whether a particular mark can be adopted and used in Canada as well as the likelihood of being able to obtain a trademark registration in Canada. This is useful if you have not started using a mark yet, because a clearance search on the trademark that you propose to adopt and use will help you determine whether you can do so without infringing on someone else's trademark rights.
We can also arrange for trademark searches in the United States or other foreign jurisdictions in which you expect to do business.
As a first step, you can do your own knockout search by searching for the exact trademark you want to use using the Canadian Trademarks Database. This knockout search may confirm an exact match for the trademark you wish to register.
If it does, depending on the correspondence between the goods and services in the registration and what you plan to sell in Canada, you may not be able to adopt, use and register that trademark. If it does not, it can't be concluded yet that the mark is available for adoption and use in Canada as prior unregistered uses, as well as similar trademarks which may be confusing with the trademark you wish to adopt could still prevent you from adopting and registering the trademark without conflict.
Trademark Opposition and Cancellation Proceedings
We act as your trademark agent before the Trademarks Opposition Board in trademark oppositions, whether to oppose the application of a third party or competitor or to respond to a statement of opposition filed against one of your trademark applications.
We also commence cancellation proceeding for clients who wish to clear unused registrations from the register to create availability to expand their own trademark portfolio. Where cancellation proceedings have been commenced against you, we help you to produce evidence of use of your registered trademark or special circumstances excusing non-use so that you can maintain your trademark registration.
We draft licences of trademark rights between trademark owners and licensees to ensure that the trademark owner has adequate control of the licensee’s use of the mark. Trademark licences are essential when a trademark is used by third parties in order to ensure that the trademark does not lose its distinctiveness.
Trademark Infringement and Validity Opinions / Cease and Desist Letters
We provide opinions on infringement, passing off and validity issues in respect of all types of trademark rights in Canada. We also prepare and respond to cease and desist letters concerning trademark infringement and passing off.
Trademark Enforcement and Litigation
We act in all types of Canadian trademark disputes, including trademark infringement and passing off actions, counterfeiting, and cybersquatting. For more information about our intellectual property litigation services, please see our IP Litigation page.
Typical Steps in a Canadian Trademark Application
Preparing and Filing Your Trademark Application
Once engaged as your trademark agent, the first step we take is to prepare a draft trademark application and ask you for confirmation of certain details in the application prior to filing.
These details include who the applicant for the Canadian trademark registration is, the goods and services with which the trademark has been or will be used, and when use of the trademark in Canada commenced with particular goods and services. Once these details are confirmed, we proceed to file the application with the Canadian Intellectual Property Office.
A few days after the application is filed, the Trademarks Office sends us an official filing notice listing the application serial number and filing date as well as a proof sheet listing the information included in the application.
Examination of Your Trademark Application
About 4 to 6 months after your trademark application is filed, a trademark examiner reviews your application and takes one of two actions. The examiner either approves the application or prepares an examiner’s report setting out certain objections to the application which is mailed to us.
We may respond to the objections with a revised trademark application or arguments against the objections or both. If the revisions and arguments satisfy the trademark examiner, the objections will be withdrawn and the application will be approved. Otherwise, the examiner will issue a further examiner’s report containing the same and possibly new objections.
Advertisement in the Trademarks Journal
If your application is approved by the examiner, we will receive a notice of approval and your trademark application will be published in the Trademarks Journal.
Within two months of being advertised, third parties may oppose the allowance of your application. They can do so by filing a statement of opposition with the Trademarks Opposition Board, which commences a quasi-litigation proceeding before the Trademarks Office to determine whether your trademark application may proceed to allowance. Opposition proceedings are rare however--only about 2% of trademark applications are opposed in Canada.
Allowance and Registration of Your Trademark
If your trademark application is not opposed, or you have been successful in an opposition proceeding, your application will be allowed. The Trademarks Office sends us a notice of allowance and asks us to pay the registration fee. If use of the trademark in Canada has commenced, once the registration fee is paid, your trademark application becomes a registered trademark in Canada.
In the case of a trademark application based on proposed use in Canada, a declaration of use stating that the trademark is now being used in Canada must also be submitted. If the trademark has not yet been used by the time of the deadline listed in the notice of allowance, we may request an extension of time to allow you additional time to start using the mark and for you to file the declaration of use.
Term and Renewal of Your Trademark Registration
Once registered, how long is a trademark good for? Your Canadian trademark registration will last for 15 years as long as you continously use your trademark in Canada. After 15 years, you can renew your trademark registration by paying a renewal fee, failing which your trademark will be expunged from the Register.
Our trademark services include:
Trademark adoption, use and registrability opinions, including arranging a Canada trademark search
Preparing, filing and prosecuting trademark applications in Canada
Arranging and supervising the filing and prosecution of trademark applications by trademark agents in the United States and other foreign jurisdictions
Worldwide trademark portfolio management and counseling
Identifying where further trademark protection may be obtained
Trademark-related due diligence in commercial transactions
Evaluating trademark portfolios
Trademark opposition proceedings
Trademark cancellation proceedings
Negotiating and drafting trademark licences and assignments
Trademark infringement and validity opinions
Preparing and responding to cease and desist letters relating to trademark infringement and passing off