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Trademark

Trademark Registration in Canada and Abroad - Isn't It Time You Protected Your Trade Name and Other Trademarks?

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 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.

As of June 17, 2019, Canadian applicants may file international trademark applications under the Madrid Protocol. Filing an international trademark application will be advantageous for Canadian applicants seeking protection in a large number of 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 trademrk 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 right side of the 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 over the phone as part of our initial telephone 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 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.

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.


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 12 to 14 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 have been rare in Canada in the past--only about 2% of trademark applications have been opposed in Canada of late, although this is expected to increase in future as a result of recent changes to Canada's trademark laws.

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. If your application was filed prior to June 17, 2019, the Trademarks Office sends us a registration fee notice asking us to pay a registration fee to register the mark. Once the registration fee is paid, your trademark application becomes a registered trademark in Canada.

In the case of a trademark application filed on or after June 17, 2019, the application will simply proceed to registration.

Term and Renewal of Your Trademark Registration

Once registered, how long is a trademark good for? Under current trademark law, your Canadian trademark registration will last for 10 years as long as you continously use your trademark in Canada. After 10 years, you can renew your trademark registration by paying a renewal fee, failing which your trademark will be expunged from the Register.

Ready to get started? Contact us for a complimentary and confidential initial telephone appointment with a member of our team.

Our trademark services include:

Conducting a Canadian trademark search

Conducting a US trademark search

Preparing, filing and prosecuting trademark applications in Canada

Preparing, filing and prosecuting international trademark applications for Canadian applicants

Arranging for and instructing the filing and prosecution of US trademark applications

Arranging and supervising the filing and prosecution of trademark applications by trademark agents in foreign jurisdictions

Worldwide trademark portfolio management and counseling

Trademark audits

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 assignments and trademark license agreements for Canadian trademark rights

One-hour consultations with a trademark lawyer

Trademark infringement and validity opinions

Preparing and responding to cease and desist letters relating to trademark infringement and passing off

Trademark litigation