Foreign Associates: Information and Documents Needed for Canadian Trademark Application Filings in the Canadian Trademark Office
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This page is intended to inform lawyers and trademark agents located outside of Canada as to what documents and information will be required to file a Canadian trademark application. If you are interested in services as a direct client, you need not review the information below before contacting us as we work with you to prepare an application and the associated filing documentation. Please see our Trademark
Required:
- The name of the applicant and the full post office address of its principal office or place of business
- The trademark to be applied for(most commonly, the word mark or a high-resolution copy of the logo/design mark)
- The disclaimer, if any disclaimer is to be made (generally voluntary, disclaimers confirm that an applicant is not claiming an exclusive right to a portion of a trademark which would otherwise be unregistrable)
- The specific goods (described in specific and ordinary commercial terms), if any, in association with which the applicant by itself or through a licensee, or by itself and through a licensee, intends to use the trademark in Canada
- The application no. and filing date of any corresponding foreign trademark application for the same mark filed within the past 6 months in a member of the Paris convention and the jurisdiction in which it was filed
- The specific services (described in specific and ordinary commercial terms), if any, in association with which the applicant by itself or through a licensee, or by itself and through a licensee, intends to use the trademark in Canada
- Confirmation that the applicant is satisfied that it is entitled to use the trademark in Canada in association with the goods and/or services
- The requisite application fee
Common Mistakes:
- Do not use someone else’s registered trademark to describe your goods and services. Although such trademarks may have become commonly accepted names for the goods or services in question, they may not be used to describe goods or services.
- When filling out the goods or service which have been, or are intended to, be used with your trademark, make sure that they are all mentioned and grouped according to the classes of the Nice Classification. The scope of goods and services may not be expanded after the application has been filed.
- The description of the goods and services you are applying for must be in specific and ordinary commercial terms. Your application should therefore use common names for the goods and services and use complete and specific wording. For assistance, you may wish to consult the Goods and Services Manual for a list of acceptable wording for many goods and services.
For certification mark used in Canada:
- The specific goods in association with which the certification mark has been used or will be used in Canada by licensee(s) of the applicant or its predecessor(s), and identification of the predecessors-in-title, if any, that licensed the certification mark for use in Canada in association with those goods and for which the certification mark has been used by said licensee(s) in association with those goods
- The particulars of the defined standard that the use of the certification mark in association with the specific goods is intended to indicate
- The specific services in association with which the certification mark has been used or will be used in Canada by licensee(s) of the applicant or its predecessor(s), and identification of the predecessors-in-title, if any, that licensed the certification mark for use in Canada in association with those services and for which the certification mark has been used by said licensee(s) in association with those services
- The particulars of the defined standard which the use of the certification mark in association with the specific services is intended to indicate
- Confirmation that the applicant is satisfied that it is entitled to use the certification mark in Canada in association with the goods and/or services
If you would like to further discuss the requirements for filing a Canadian trademark application as a foreign associate, or are interested in services as a direct client, please contact us for a complimentary and confidential telephone appointment.