FAQLearn how trademarks can serve your business, and what issues you should be aware of when you get started. Click on the questions to explore a topic:
What is a trade-mark?A trademark is a legal and business tool that allows you to have a unique identity in the marketplace. Any special element that you use to promote and distinguish your business (and the services or products you sell) from others can be a trademark. This means a trademark could be:
- A logo
- A name
- A slogan
- Packaging (shape, colour, etc.)
- The CBC’s logo (the one that looks like an exploding pizza).
- Molson’s “I am Canadian” slogan.
- The Toronto Maple Leafs’ blue maple leaf (that’s a combination trademark—logo + name)
What can’t be registered as a trademark?Well might you ask. In fact, plenty of things cannot be registered as a trademark. These include:
- With some exceptions, names and surnames (like John Doe)
- Clearly descriptive marks (like “cold” for ice cream or “lather” for shampoo)
- Deceptively misdescriptive marks—words that are misleading (like “air express” for bicycle couriers)
- Places of origin or geographic location (like “Canada” for bacon or maple syrup or “Montreal fashions” that are not produced exclusively in Montreal)
- Clearly descriptive words in other languages (like “Chai” for tea or “manteau” for coat, but “Chai” for coat could be registered)
- Words that are confusingly close to another registered trademark or pending trademark (like “The James Bay Company” for a department store)
- Words that resemble prohibited marks, including:
- Official government designs like flags
- Coats of arms of royal family and provinces, territories and municipalities
- Emblems of the Red Cross, Red Crescent and United Nations
- Crests, coats of arms, flags and symbols of other countries
- Symbols of public institutions
- Racial slurs
- Obscene depictions
- Profane language
- Portraits or signatures of living persons or those who have died in the last thirty years, unless you have formal permission
- Plant-variety denominations
- Origin of wine or spirits not actually produced in that region
What’s the difference between a trade name and a trademark?While these terms are easily confused, a trade name is the name an individual or organization uses to conduct their business (it can be the registered business name, or the incorporated name), while the trademark is the unique “mark” used to distinguish your business in the marketplace. Just because you have a trade name, even a registered tradename, does not mean that you have a trademark. Back to top
Who can register a trademark?Any individual, organization, business, trade union or association may apply to register their mark. Back to top
Why should I register my trade-mark?Just as a marriage can be registered officially or remain common-law, so can a trademark. That means that it exists and you have legal rights around it as soon as you begin to use it. Still, a common-law trademark is weak in comparison to a registered trademark. Say for example that someone uses your trademark and you sue them. It can be much harder to prove your case if the mark is unregistered (common-law) and you would be able to bring a “passing off” action, but not an infringement claim. Also, your rights under common law are restricted to the specific regions (Toronto, say, or Sudbury) where you have established a reputation. Registered trademarks are valid Canada-wide. Some more advantages to registering a trademark:
- Your trademark will be in effect across Canada, even if your business is restricted to just part of a city or province.
- No one else in Canada can register the same mark.
- Anyone who tries to adopt a similar trademark can be sued for infringement with all of the remedies available under the Trade-marks Act.
- The longer your trade-mark has been registered, the more difficult it becomes for third parties to challenge it, so long as you’ve continued to use it consistently.
- Licensing your trademark—for franchises, say—is much easier if it is registered.
- Your first application to register can give you certain benefits in many other jurisdictions, for example, access to a “priority” (or earlier) filing date.
- Registering your trademark adds to the cultural value of your business. It may well add to its capital value as well if you are seeking investors, because trademark registration is like an asset in itself.
When should I register my trademark?It’s best to register as soon as you begin to affiliate your brand or identity with your unique “mark”—the word, logo, phrase or other unique thing that becomes your trademark. As you begin the registration process , you might discover that someone is already using a similar or identical mark. It’s better to find out early than several years after using it and establishing your brand identity. If you were sued for trademark infringement, you would likely have to abandon your trademark and pay damages to the true owner. You can even apply to register before you’ve actually begun using your mark. Back to top
How long does the trademark registration process take?A simple, straightforward trademark registration generally takes 12-18 months. We do our best to expedite the process by carefully drafting your application to avoid any objections by the CIPO. In the rare case that we receive an objection, we respond in a timely manner so that your application is delayed as little as possible. Back to top
How long does trademark registration last?It’s valid for fifteen years with the opportunity to renew. Back to top
Why should I hire a trademark agent?Registering a trademark is a complicated and time-consuming process. That’s why the Canadian Intellectual Property Office (CIPO) recommends hiring a registered agent. At the Trademark Group, our team of expert trademark lawyers and skilled agents will support you every step of the way. And if you’re planning to register your mark in other countries such as the US or the UK, CIPO strongly advises hiring an agent. So do we. It can make foreign registration a lot easier and less expensive in the long run, and we have an extensive network of agents throughout the world who have the same approach we do. The Trademark Group will:
- Save you time—we’ll monitor all government correspondences, leaving you time to run your business while we ensure you provide timeless and correct responses to the CIPO office.
- Save you money—weak applications will be rejected and you’ll have to re-pay all the fees when you re-apply. If you’ve already started using your trademark, you’ll have to create new branded supplies like stationary, websites and business cards. We’ll make sure your application is strong from the get-go.
- Save you angst—weak trademarks leave you vulnerable to legal issues such as “cease and desist” letters and court action. Instead, we help you to do it once, and to do it right.
How registering a trademark worksThe process of registering your trademark can be complicated and time-consuming. We are here to help you every step of the way. Preliminary search You’ll complete a questionnaire so we can get to know you and your business. We’ll also talk to you (usually by phone) to help you think through some important questions, such as what distinguishes your trademark form others, and what are some of the potential strengths and weaknesses of your application. Then we’ll conduct what are called preliminary screens of the CIPO Trademark Registry to be sure no one else has already registered the same mark. We look for exact matches from the 8 million registered marks and business names. If yours matches an existing one too closely, we’ll advise you at this point to consider a new trademark. Searches and opinion After the preliminary search and after we’ve offered initial advice about your trademark, if you want further review and comfort, we’ll conduct a more extensive search—a comprehensive name search and report—that will include not just exact matches but also uses special algorithms to turn up similar-looking or similar-sounding marks. It’s important to check for similar marks because you need to ensure you don’t adopt and invest in a mark that appears to be “confusingly similar” to a pre-existing mark. Now, while it’s not a legal requirement, searching is one of the most important stages and something we strongly advise you to do or have us do for you. It ensures “due diligence and good faith” that you’re not infringing an existing trademark. If you go ahead and use a mark that legally belongs to someone else, you could be sued for infringement or asked to pay damages. At the very least, you could be asked to stop using it—with the result that you lose all the value you’ve built up in customer awareness, not to mention things like stationery and supplies. Searching reduces the risk of wasting time and money by submitting an application that is doomed to failure. For those who may be launching a larger brand or series of related marks, we offer very detailed searches with opinions. These are more expensive, but if you are investing heavily in your brand, it is sometimes better to be as sure as you can be. If, after conducting searches, we have found your mark to pose potential conflicts, we will work with you to create a stronger mark that leads to a stronger application. You will not be charged for additional searches as we work on fine-tuning your trademark. Application and registration Once we have determined that there are no apparent conflicts that could lead to your trademark application being rejected, we will begin the application process for you. It is a complex process and any small error can be fatal to your application. A complete trademark application includes:
- A registration application
- A graphic file of your logo (if needed)
- A filing fee
- A search of existing trademark records to cross check against yours for similarities or conflicts.
- An examination of your application to be sure you’ve complied with regulations. You or your agent may be informed of objections to your application, and you will have the opportunity to respond. We’ll help make sure your answers satisfy the assigned Examiner. If your application is refused at this stage, we can help you appeal to the Federal Court of Canada.
- The Office will perform a second search to make sure that in the months while steps 1-3 were taking place, no trademarks were registered that conflict with yours. This is called a pre-publication search, as it takes place before your trademark is published in the Trademarks Journal online. You’ll be contacted if the Office turns up a conflicting mark.
- Approval for Advertisement and Publication of your trademark in the Trademarks Journal, which lists all approved trademarks in Canada.
Trademark InfringementHelp! Someone has copied me! If you’ve registered a trademark, and someone has used your sign, symbol, logo or phrase—copied you!—you have legal rights. We can help you with dispute resolution and infringement issues. After you’ve decided that your trademark is being infringed, you have two choices:
- Do nothing; or
- Pursue legal action