A trademark is the identity of your business. It is the recognizable elements of your brand that consumers can easily identify and associate with your business. Trademarks in Canada can include various types of elements, including words, slogans, logos, taglines, designs, symbols, modes of packaging, moving images, three-dimensional shapes, holograms, colours, scents, tastes, textures, sounds, and any combination of these elements. The key requirement is that a trademark must be capable of distinguishing the goods or services of one person or organization from those of others; in other words, it must be distinctive. Trademark protection should be considered at the beginning of any brand development project and is applicable to any industry, no matter the size of your business, from a small neighbourhood bakery to a multi-national consumer goods corporation and everything in between. Your trademarks have the potential to be some of the most valuable assets of your business.

MBM helps clients from the initial step of brand clearance searches, through the entire trademark process, to the enforcement of your trademark rights in Canada and worldwide. We provide cost-effective, client-focused, responsive legal advice, and a complete range of trademark services, including trademark portfolio management, assisting with licensing deals and contracts, and trademark litigation.

Our experienced trademark lawyers have successfully enforced trademark rights before all levels of Canadian courts, including the Supreme Court of Canada, the Federal Court of Appeal, and the Federal Court, and sometimes even contributed to shaping of the Canadian trademark law by setting important legal precedents.

What do we provide as part of MBM’s trademark services?

  • Brand clearance searches and legal opinions on brand selection
  • Trademark searches
  • Trademark monitoring
  • Trademark filing & prosecution
  • Madrid trademark filing & prosecution
  • Trademark renewals
  • Trademark portfolio management, domestically and globally
  • French Language Law Compliance in Canada
  • Drafting cease & desist letters or demand letters
  • Trademark dispute resolution (negotiation, mediation, arbitration)
  • Assisting with Amazon brand registry
  • Assisting with Amazon take-downs
  • Trademark oppositions
  • Cancellation and invalidation proceedings
  • Litigation related to:
    • Passing off
    • Infringement & dilution
    • Depreciation of goodwill
    • Anti-counterfeiting
    • Trans-shipping and parallel import matters
    • False advertising
    • Unfair competition
    • Domain name disputes
  • Trademark transactional services:
    • Licensing agreements and contracts
    • Assignments of rights
    • Purchase & sale agreements
    • Distribution agreements
  • Geographical indicators

How to get started?

MBM is happy to provide the initial consultation free of charge to help you first identify your specific intellectual property needs.


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  • What is a Trademark?

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    • A trademark is a sign or combination of signs used or proposed to be used by a person or an organization to distinguish their goods or services from those of others. Trademarks in Canada can include various types of elements, including words, slogans, logos, taglines, designs, symbols, modes of packaging, moving images, three-dimensional shapes, holograms, colours, scents, tastes, textures, sounds, and any combination of these elements.

  • Why should I register my trademark?

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      • It provides you with proof of ownership.
      • It gives you the exclusive right to use the trademark in Canada for 10 years and perpetually if you continue to renew your trademark registration every 10 years.
      • It discourages others from using your trademark without permission.
      • It gives you more options to legally go after people/businesses that infringe on your trademark.
  • Can I file a trademark application myself?

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    • While it is not necessary to engage a trademark agent to file a trademark application, it is highly recommended that you seek the advice of a registered trademark agent due to the complexity and nuances of the trademark process. A registered trademark agent can help, among other things, reduce the chance that your application will be refused by the examiner or opposed and ultimately save you time and money.

  • Is it necessary to perform a trademark search before filing a trademark application?

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    • Even though it is not mandatory to do a search, it is highly recommended. A trademark search can determine if another person/business already has a trademark identical to or similar to yours, which may prohibit the registration of your trademark or challenge the use of your proposed trademark in the marketplace. Performing a search prior to filing an application or using the trademark may save you time and substantial costs. If an identical or similar trademark is located, a trademark agent would be able to assess the degree of risk of using your trademark or, otherwise, suggest you choose a new trademark before you incur substantive marketing or legal expenses.

  • Is a business name registration the same as having a registered trademark?

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    • A business name registration is not the same as having a registered Trademark.  Registration of a business name or incorporation of your business does not give you any trademark rights.  If someone else registers a trademark that is the same as your business name, you could potentially find yourself involved in expensive legal proceedings to establish ownership of the mark.  A small investment in a trademark registration today can help you avoid wasting time and money on legal disputes tomorrow.

  • Is registering a domain name the same as having a registered trademark?

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    • Registering your domain name does not give you any trademark rights. Registering your trademark is done through the Canadian Intellectual Property Office (CIPO) by filing a trademark application. Given the complexities of the trademarking process, it is always advisable to use a registered Canadian trademark agent to do this on your behalf.

  • What does prosecution of a trademark application mean?

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    • Filing and prosecution of a trademark application refers to the process of seeking and obtaining registration of a trademark with a government trademark office, such as the Canadian Intellectual Property Office (CIPO). This process involves several steps: filing the application, examination of the application, publication of a trademark, opposition period, and registration. Throughout the prosecution process, the applicant, normally using a registered trademark agent, may need to communicate with the trademark office to provide additional information and sometimes to amend the application in order to address any issues that may arise. The goal of prosecution is to achieve successful registration and protection of the trademark.

  • What does it mean when an Office Action is issued for your trademark application?

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    • During the examination period of your trademark application, an examiner from the Canadian Intellectual Property Office (CIPO) may find some issues with your trademark application, at which point an examiner will issue a report detailing the issues. This report is called an “office action”. The applicant, normally using a registered trademark agent, must respond to these office actions, addressing the concerns raised by the examiner by a specific deadline. It is possible to receive more than one office action on the same trademark application.

  • What is the Nice Classification system?

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    • When registering a trademark, you need to identify which goods/services your trademark will cover, and most of that identification stems from the type of business you are operating. In Canada, a Nice Classification system is used when filing a trademark application to categorize goods/services according to 45 general classes. There are 34 classes of goods and 11 classes of services. Each trademark can cover more than one class of goods/services.

      For example:
      If you are operating a bakery and would like to file a trademark for your bakery’s name, when identifying the classes of goods/services that you need for your application: you will need to select class 30 (“bakery goods, namely, biscuits and cookies”) under the goods section, and class 35 (“bakery shops”) under the services section.

  • What is the Madrid Protocol Trademark application?

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    • The Madrid Protocol offers the possibility of obtaining trademark protection in a number of countries by filing one single international application in one language with the World Intellectual Property Organization (WIPO). One overall payment is made in one currency, simplifying the application process and, most of the time, providing financial savings for those seeking to obtain and maintain protection for their trademarks internationally. However, it is important to note that your international application will eventually be transferred for examination in each individual country, at which point you might need to appoint a registered trademark agent in each country.

  • What are Geographical Indicators?

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    • Geographical Indicators (GIs) are signs or symbols used on products that have a specific geographical origin and possess qualities or a reputation that are attributable to that origin. These indicators serve as a form of intellectual property rights and are used to protect and promote products that are closely linked to a particular region, territory, or country.

      Examples of famous Geographical Indicators around the world:

      • Champagne (France)
      • Darjeeling Tea (India)
      • Parmigiano Reggiano (Italy)
      • Scotch Whisky (Scotland)
      • Prosciutto di Parma (Italy)
      • Icewine (Canada)

Clients We Have Worked With

Previous Client
Lodestar Structures
Pure Hothouse Foods
U-Haul International
Kettlemans Bagel
1-VALET
Purafy
Grafoid
Expander Energy Inc.
Mewburn Ellis
KAI IP Law
OMNI
Bugnion
Canadian Society for Exercise Physiology (CSEP)
Canadian Roofing Contractors Association
Next Client

What our clients say about us

quote mark

I am delighted to express my sincere appreciation for the services provided by MBM. Under the guidance of MBM’s team of brilliant lawyers and supporting staff, Lodestar Structures successfully navigated the complex process of patenting our innovative Lodestar Building Modules worldwide. Their attentiveness, expertise, and proactive approach have made them an invaluable partner in safeguarding our intellectual property. Working with MBM has been a pleasure, and I wholeheartedly recommend their expertise to any organization seeking top-notch legal support in the realm of intellectual property.

— Jeff Bradfield, CEO, Lodestar Structures

quote mark

I have been working with MBM for years, specifically with Scott, on our trademarks, patents, and litigation. MBM is an important part of our IP team. They know our business. Their advice is spot-on, and they don’t waste our time or money. Also, communication is critical for me, so being able to pick up the phone any time to speak with them and knowing that I will get their full attention makes working with MBM a pleasure. And because they are just good people, we never miss a chance to grab dinner together when we are in the same city.

— Steve Winkelman, Assistant General Counsel, U-Haul International

quote mark

When people think of Kettlemans bagels, they don’t often think of trademarks, patents and other intellectual property. But if you have a brand or starting one, you need to protect your identity. For Kettlemans brand, we have relied on MBM’s team for that, and they have delivered. Randy, Scott and the rest of the MBM team have provided tremendous direction and IP strategy guidance. They have spent time with us, asking questions, listening to our needs, and explaining the best course of action to protect our brand. Securing our IP rights, especially our trademarks, has been an essential part of our business strategy as we expanded our brand. It’s been a huge benefit to have MBM as a partner because they help us better understand what should be protected and how.

— Amer Wahab, President, Kettlemans Bagel

quote mark

MBM is truly a full-service IP firm. When we started with them, Randy and Scott assembled a dedicated team of MBMers to manage our account in all areas of IP. Randy, Grace, Dan, and Jamal handle our patents and contracts; Scott and Deborah handle our litigation; Poonam handles our industrial designs; and Elizabeth handles our trademarks. It may seem like a big MBM team, but when you are a growing business, you need a strong IP team. They all work seamlessly together, communicating and coordinating internally and externally with our team and the network of foreign associates for our international portfolio. MBM’s fee structure is transparent and reasonable, communicated to us in advance of any project, which helps us with budgeting. We value their savvy advice and rely on them for all our IP needs.

— Brandon Vaters, VP of Operations, 1-VALET

quote mark

Because we are in the CleanTech space, which is constantly evolving, it was important for us to find an IP firm that understood our industry well, the challenges we face, and could provide the strategic IP advice needed for us to expand into international markets. We found that in MBM. Randy, Suzanne, and Elizabeth have been helping us with drafting, filing and prosecuting our patent and trademark portfolios around the world, exhibiting exceptional technical skills and legal acumen and providing straightforward advice. In addition, their prompt responsiveness and attention to detail always show their professionalism. We are grateful for their IP advice and unwavering commitment to helping us break boundaries and grow our business.

— Cameron Runte, VP of Product Development, Grafoid/Purafy

quote mark

Expander has been working with Dr. Poonam Tauh and the MBM team for over 10 years. They have consistently demonstrated a deep understanding of our business and our inventions and always provide straightforward, no-nonsense advice in a cost-effective manner. Poonam is highly experienced in the fields of Clean Energy, Low Carbon Intensity fuels, Oil and Gas and Chemistry. As a result, she tailors her advice to our specific needs. She is always very responsive, ready to discuss patent strategy, and offers a reasonable fee structure for all MBM IP services. We value MBM’s savvy advice, rely on them for all our IP needs and would never hesitate to recommend them to any business in need of Intellectual Property advice. MBM is truly a full-service IP firm!

— Gord Crawford, President and CEO, Expander Energy Inc.

quote mark

The MBM team is great to work with. They understand our needs as a customer and provide prompt and detailed feedback regarding our trademark and litigation matters. They are always readily available should there ever be an urgent request or question. Scott, Deborah, Sabrina, and Elizabeth are important resources to our company.

— Chris Veillon, Chief Marketing Officer, Pure Hothouse Foods

quote mark

We have worked with MBM for over 15 years. They have always been quick to respond, thoughtful in their approach, and focused on our success. In many ways, they are an extension of our team and a real partner in our business growth. We trust in their IP guidance and feel comfortable knowing they understand our vision and will help protect our IP, as we aim to provide scalable and proven waste-to-clean-fuel solutions to support a circular economy.

— Michael Wahl, General Counsel & Corporate Secretary, OMNI Conversion Technologies

quote mark

We have been collaborating with MBM for over 20 years and consider them one of our most reliable partners within our network of associates. Their attorneys combine technical expertise with creative problem-solving and provide strategic input, which helps to ensure that cases progress smoothly and efficiently. They don’t just execute instructions; they also frequently offer insightful suggestions.

I believe that our 20-year collaboration with MBM demonstrates their reliability, and we consider them a valuable asset to our clients when they need assistance in Canada.

— Renata Righetti, President, Bugnion S.p.A. (Italy)

quote mark

In recent years, the Canadian trademark system has undergone significant changes. Given that trademark applications from South Korea to Canada are not commonplace, many Korean agents lack a comprehensive understanding of the latest Canadian trademark practices. However, when a Korean company decides to file a trademark in Canada, it signifies the crucial importance of the Canadian market to its business strategy. In this context, partnering with a highly competent and trustworthy Canadian IP firm from the outset of the application process becomes paramount. MBM has proven to be an exceptional partner in this regard.

What sets MBM apart is their consistent responsiveness coupled with clear, practical, and invaluable advice. Working with MBM, one immediately senses their well-established systems and processes. However, unlike many large, systematized firms that can feel impersonal, MBM strikes a perfect balance by providing personalized and customized solutions that address each client’s unique needs. Their deep understanding of the evolving Canadian trademark landscape, combined with their ability to simplify complex issues, makes navigating the Canadian IP system feel much less daunting. MBM’s expertise instills a sense of confidence that your intellectual property interests are in capable hands. With MBM, you can trust that you won’t lose your way in the intricate landscape of Canadian IP law.

— YoungJoo Song, Partner, Patent & Trademark Attorney, KAI IP Law (South Korea)

quote mark

Working with the MBM team is always fun and a great experience. We appreciate their personalized approach and attention to detail. MBM is always proactive in providing the best strategy for our clients, and we appreciate the quality of work they have provided us over the years. MBM also has competitive fees, which makes it easy for us to work with them.

— Alberto Giordano, International Relations & Tarun Gandhi, Partner, Patent Attorney, Chadha & Chadha (India)

quote mark

We’ve found the MBM attorneys to be responsive and professional, working smoothly with us to deliver the results our clients want in Canada.

— Robert Andrews, Partner, Patent Attorney, Chief Inclusion & Diversity Officer, Mewburn Ellis LLP (UK)

quote mark

Jonathan Roch and the MBM team played a pivotal role in supporting CSEP during a crucial time when intellectual property and trademark expertise was essential. Their in-depth knowledge and strategic guidance helped us protect our brand and navigate the complexities of IP law with ease. The team was highly responsive, thorough, and committed to ensuring our intellectual property was safeguarded, allowing us to focus on our mission and vision with confidence. We highly recommend the MBM team for their exceptional service and expertise in IP and trademark law.

— Zach Weston, Chief Executive Officer, Canadian Society for Exercise Physiology (CSEP)

quote mark

While working with MBM,  they have expertly guided us through the entire trademarking process, including a well-thought-out trademark strategy. Jonathan and his team took the time to understand our business goals, communicated with us regularly, provided great IP advice, and executed it cost-effectively. I will definitely recommend MBM.

— Jim Facette, Executive Director, Canadian Roofing Contractors Association