Trademark

Patent Your Innovations to Power Your Profits

Trademarks are key assets for every business. 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. Whatever niche your business is in, over time there becomes an increasingly crowded marketplace for you, and with it, more competition for trademarks.

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. As a business owner, you spend so much time and money branding your company name and logo, it’s important to protect them to prevent others from capitalizing on your intellectual property.

Our Canadian trademark lawyers and trademark agents have considerable experience in trademark law. When you apply to register a trademark with us as your trademark agent, we counsel you on the entire process, from application to registration in Canada, the United States, and abroad. We have experience supervising and managing clients’ worldwide trademark portfolios and through our network of foreign associates, we obtain trade mark registration services in Europe and other foreign jurisdictions.

Canadian applicants may also file international trademark applications under the Madrid Protocol. Filing an international trademark application will be advantageous for Canadian applicants seeking protection in more than a few countries as the filing fees for the international application will be lower than the sum of the national and regional trademark office fees for individual national and regional trademark applications filed separately. If you have any questions about filing an international trademark application or any of our other trademark services or you are ready to start working with us, please contact us for a complimentary and confidential initial telephone appointment with a member of our team.

For more information about Canadian trademark registration, please see the bottom half 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 resources page.

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.

Canadian and United States Trademark Searches

We offer trademark searches in Canada and the United States and advise on whether a particular mark can be adopted and used as well as the likelihood of being able to obtain a trademark registration. 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. You don't want to expend time and money building a brand only to find out it needs to change.

As a first step, you can do your own knockout search by searching for the exact trademark you want to use in the Canadian Trademarks Database. Alternatively, we do a complimentary knockout or exact match search as part of our initial telephone or video appointment. This knockout search may confirm an exact match for the trademark you wish to register.

If it does, depending on how similar the goods and services in the registration are to what you plan to sell in Canada, you may not be able to adopt, use and register that trademark. If there is no exact match, this is good news, but 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.

Read our article on what you need to know about conducting trademark searches for more information about trademark searching.

Trademark Enforcement and Litigation

Our trademark litigators 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.

Trademark Opposition and Cancellation Proceedings

If you need to oppose the trademark application of a competitor or third party, or must respond to a statement of opposition filed against one of your trademark applications, we can act as your trademark agent before the Trademarks Opposition Board in the trademark opposition.

If you want to clear unused registrations from the Canadian Trademarks Register to create availability to expand your own trademark portfolio, we can start cancellation proceedings to expunge those trademark registrations. Where cancellation proceedings have been commenced against you, we help you to produce evidence of use of your registered trademark or to argue special circumstances excusing non-use so that you can maintain your trademark registration.

Trademark Licensing

Our trademark lawyers draft licence agreements 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 licence agreements 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 have a great deal of experience preparing and responding to cease and desist letters concerning trademark infringement and passing off.