From Filing to Registration: the Canadian Trademark Application Process

By Carrie Kerr, November 15t^h, 2016

Have you decided to register your trademark in Canada?

The application process at the Canadian Intellectual Property Office (“CIPO”) may seem somewhat complex, especially if it is your first time registering a trademark. It isn’t as simple as submitting an application, paying a fee and POOF! - as if by magic - you have a trademark registration. There are various requirements, stages, communications from CIPO and fees involved.

As an introduction to the process, here is what you can expect as your application moves its way through CIPO from the application stage to registration:

Filing

After your application is filed at CIPO it will be assigned a filing date and application number, provided that the application is complete. CIPO will also add your application to the Canadian Trademarks Database and issue you a formal filing acknowledgement and a proof sheet that summarizes the information in your application.

Examination

A trademark Examiner will then review your application. The application is reviewed for various formality requirements, including whether the description of goods and services are sufficiently specific.

The Examiner will also conduct a search of the Trademark Register to determine whether there are any prior applications or registrations that are confusing with your mark.

Lastly, the Examiner will determine whether your trademark is registrable in accordance with the Trade-marks Act. There are certain types of trademarks that are prohibited or are not registrable, including marks that are clearly descriptive or deceptively misdescriptive, are primarily merely the name of a person living or deceased within the past thirty years or are scandalous, obscene or immoral.

If there are any doubts about your application, the Examiner will issue an Examiner’s Report. You will have a chance to respond to the Examiner, and if the objections raised in the report are not overcome, the application will be rejected.

Advertisement

If the Examiner's objections are overcome, the trademark will be approved for advertisement in the Trade-Marks Journal, a weekly publication by CIPO which lists trademark applications being sought for registration.

The purpose of having your application published in the Trade-Marks Journal is to allow for members of the public to have an opportunity to oppose your proposed trademark.

This “opposition period” lasts for two months from the date of advertisement.

Opposition

If your application is opposed by a third party, we suggest contacting a registered trademark agent, who will be able to assist you in this complex process.

Allowance

If your application is not opposed, CIPO will issue a Notice of Allowance, inviting you to pay the Registration Fee.

If your application was filed based on “proposed use” in Canada, before the mark can register, you will need to submit a Declaration of Use, attesting to the fact that you have used your mark in Canada in association with the goods and services in the application. If you have not yet used your trademark in Canada by the time the Notice of Allowance issues, there are extensions of time available to pay the Registration Fee and submit the Declaration of Use which will give you additional time to begin using your trademark.

If your application was filed based on use or making known in Canada, you will only have to pay the registration fee.

Once the Registration Fee and Declaration of Use (if applicable) have been submitted and accepted by CIPO, your trademark application will register. CIPO will then issue an official Certificate of Registration.

If you have any questions about the Canadian trademark application process or would like further information please do not hesitate to contact us. We are always happy to help.