The registration of a trademark with the Canadian Intellectual Property Office (CIPO) is an important step to reinforce the brand name and goodwill that your business has built or will build.
It is important to know instances when trademark registration is essential and when it is unnecessary. This must be determined on a case-by-case basis, but this article will provide you with information and links to help you make that decision. The content in this article is for purposes of general information only and is not legal advice.
Definition of a Trademark
A trademark may be a word or a series of words, designs, sounds, or a combination of these. This could be a business name, a logo, a slogan, or the name of a product or service offered by a business.
The trademark must be used to distinguish the products or services of a business from those of others in the marketplace. As a result, the value of a trademark is in its ability to distinguish not only the goods or services produced by the business, but also any associated goodwill or reputation. A trademark registration for registration’s sake has very little value, unless it is used and enforced.
Before Registering a Trademark
Before proceeding to registration, it is important to consider whether the proposed trademark is registrable and whether it is a worthwhile investment.
The registrability of a trademark is defined in the Trademarks Act. Generally, the law does not allow for the registration of commonly used words that are clear descriptions or deceptive misdescriptions of the product or service, names and surnames, geographical locations, words in other languages that describes the product or service, words or designs confusing with previously registered or pending trademarks, and prohibited marks. Distinctive made up words, on the other hand, may be registrable if they are not confusing with existing trademarks.
Another issue to consider is the scope of a trademark’s protection once it is registered. Overall, acronyms and dictionary words have very narrow protection unless they have become well known through use and reputation.
Registration of a Trademark
The application for the registration of a trademark may be submitted online to the Office of the Registrar of Trademarks for a fee of $250. The application process requires, at minimum:
- an individual’s or a business’s name and address
- the word(s) or representation of the trademark to be registered
- the goods or services it will be or has been used for
- the date of first use
Once filed, the application will be assigned a filing date and an application number. It will also be entered into the Canadian Trademarks Database, with the application status labeled as “pending”.
A trademark examiner will proceed to review the application. If the examiner objects to the registrability, entitlement or form of the application, the applicant will be notified and must respond. Any failure to satisfy the examiner’s objections will result in the refusal of the application. It is possible to appeal the refusal to the Federal Court of Canada, but this may be a costly process.
If the examiner approves the application, it will be advertised in the publicly available Trademarks Journal. If a third party opposes the registration of the trademark within two months of the advertisement, the opposition must be resolved before the trademark is registered. Opposition proceedings are dealt with by the Trademarks Opposition Board (TMOB) and may be a costly and time consuming process.
If there are no oppositions or if the opposition has been rejected by the TMOB, the application will be allowed. A Notice of Allowance will be sent to the applicant and the registration fee of $250 must be paid.
After Registration of a Trademark
The trademark registration lasts for 15 years and may be renewed online with a payment of $350. A registered trademark may be licensed, assigned or sold to another person or entity. Unfortunately, if this is done improperly, it may result in the invalidity of the trademark.
Again, a trademark registration for registration’s sake has very little value, unless it is commercially used and enforced. However, in order to strengthen your brand and protect others from infringing your trademark, registration is an important tool to delineate the ownership of your intellectual property.
Note: The content in this article is for purposes of general information only. It is not legal advice.
Photo Copyright: Jakkrit Orrasri