Filing and registering a Canadian trademark in Canada is somewhat complex, particularly for those new to the application process. The process is not as simple as submitting your trademark application to the Canadian Intellectual Property Office (CIPO), paying all required fees, and you collect your Certificate of Registration immediately. To register a trademark in Canada, various stages, requirements, communications from CIPO and payment of fees are involved.
If you’re new to trademark registration in Canada, the following are the different stages your application will go through until your trademark is registered.
After filing your trademark application at CIPO, an application number and filing date will be assigned to the application as long as the application is complete. The next thing CIPO does is to add the new trademark application to the Canadian trademark registration Database and you will be issued an official filing acknowledgment as well as a proof sheet showing a summary of information in your application.
In this stage, your application is reviewed by a Trademark Examiner. The Examiner checks if your application meets various conditions, such as checking whether your goods and/or services have a specific or distinct description. Another thing the Examiner does is searching the Trademark Register to confirm whether your trademark is confusingly similar to previously filed or registered trademarks or not. It is the responsibility of the Examiner to find out whether your trademark is qualified to be registered in line with the Canadian Trade-marks Act. As specified in the Trade-marks Act, some trademarks cannot be registered, including trademarks that are deceptively misdescriptive, descriptive, the name of a person (living or dead), immoral, obscene and scandalous.
You will receive an Examiner’s Report from the Examiner if some objections are raised about your application. You will be given an opportunity to respond to these objections, and if all the objections are not settled, the Examiner will reject your application.
If there are no objections or they have been overcome, your trademark will be published in the Trade-marks Journal. This Trade-Marks Journal is CIPO’s weekly publication which lists all filed trademark applications for registration. The rationale for publishing your application in the Trade-Marks Journal is to give third parties a chance to file an opposition against your proposed mark. The opposition period is only for two months from the date of first publication.
If a third party opposes your trademark application, you will need to contact a registered trademark agent in Canada to help you in resolving the opposition by the third party.
If there is no opposition on your application, you will receive a Notice of Allowance from CIPO, informing you to pay the Registration Fee. If you filed your application based on “proposed use”, the trademark cannot be registered until you submit a Declaration of Use, confirming that you’ve used the trademark in Canada in association with the goods and/or services stated in your application. However, if the trademark has not been used in Canada before CIPO issues the Notice of Allowance, you will be given adequate time to pay the Registration Fee and submit the Declaration of Use. These give you extra time to start using the mark. On the other hand, if you filed your application based on making use or known in Canada, then you will only pay the Registration Fee after CIPO issues the Notice of Allowance.
Your trademark will be registered after CIPO has received and accepted your Registration Fee and Declaration of Use. After that, you will be issued an official Certificate of Registration for your Canadian trademark.
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