1. Why register a trademark?
For both commercial and protection reasons, trademarks should be registered. The risk of not registering a trademark is that others may register an identical or similar mark that could impede the ability to use or register the mark in Canada. Registration is prima facie evidence of ownership and validity. Registration provides protection throughout Canada.
2. Is registration of a mark mandatory?
Registration is not compulsory, but it is advisable. As discussed below, the legal benefits of registration may not be available otherwise. Furthermore, compared to the burden of proof needed to enforce rights in an unregistered trademark, enforcement of a registered trademark is less expensive.
3. What is registrable?
Word marks and service marks that are not descriptive, and design marks, are registrable. Color may be claimed as a feature of the mark. Certification marks and distinguishing guises can also be registered.
4. Can a trademark be registered for retail and like services?
Yes.
5. How are domain names protected?
Domain names can be protected as trademarks.
6. Should a trademark be searched before filing?
Applications are officially searched as to prior marks, but this takes several months. If the applicant makes no prefiling search, and the official search is clear, the cost of the prefiling search is saved. However, if the official search is not clear, the prefiling search could have saved the applicant the cost of filing an application. If the mark is to be used in many countries, a prefiling search is recommended, at least in major countries, to avoid unnecessary costs entailed by adopting, developing, and filing a mark that has already been registered by someone else.
7. How do I file?
An applicant may directly file if a Canadian address for service is given, or may contact a Canadian trademark attorney.
8. What information must be provided before filing?
Before filing, an applicant must provide full details of the applicant, a list of goods/services to be covered, date of first use in Canada for each of the specified goods or services (if applicable), particulars of the home application or registration (if applicable), and convention priority information (if applicable). If relying on a home application or registration, the applicant must name a country of the Paris Union where the mark has been used. There are no documents to sign. Specimens of the mark are not required for filing.
9. Is local registration the only option, or are there international alternatives?
There are no international alternatives and a Canadian application only has effect in Canada.
10. Is it necessary to file more than one application if a mark is used in more than one class of goods and/or services?
No. Any number and variety of specific goods and services may be included in a single application. An application is not classified by goods or services.
11. Is it possible to take advantage of a home application or registration?
If an applicant抯 home country is a member of the Paris Convention, and provided its home application is the first application and has been filed within the six months preceding a Canadian application, the filing date of the home application can be claimed as the filing date in Canada. Similarly, if an applicant抯 home country is a member of the World Trade Organization it should be possible to claim the home filing date; consult a Canadian trademark attorney. In addition to convention priority, it is possible to base a Canadian application on a home registration (or pending application that becomes a registration) if there has been use of the mark in any country of the Paris Union. This would make use in Canada unecessary to getting a Canadian registration.
12. Must a trademark be used after registration, and what happens if a trademark is not used?
There are no fixed rules concerning terms of nonuse. Normally, nonuse cancellation proceedings cannot be brought for at least three years from the registration issue date and resumption of use can cure nonuse. However, resumption of use after initiation of cancellation proceedings will normally not cure nonuse. A Canadian trademark attorney should be consulted.
13. Is using a variation of the trademark allowable?
Yes, if the variation is immaterial, but there is no clear answer to this issue. A Canadian trademark attorney should be consulted.
14. Is there any advantage to using a trademark before filing an application?
No.
15. For an application to be valid, are there any particular requirements that must be met?
No. Anyone who has used, proposed to use, made a trademark well known in Canada, or filed an application in a home country and used the trademark in a Paris Convention country may file an application.
16. What information is first published about an application/ registration and when is it published?
An application becomes public record immediately and is published for opposition after all requirements are met, usually between 18 months and two years after filing.
17. What kind of examination (if any) will a new application undergo?
An application is examined to determine if the mark complies with local rules as to inherent distinctiveness and deceptiveness. A search is then conducted for prior conflicting marks that can be cited against the application.
18. What response to official objections is required?
If the examiner rejects the mark, the applicant has four months to respond to the rejection. The response deadline is generally extendible. The goods/services of the application might need to be amended.
19. How long is the registration process?
The registration process takes about 20 months or more.
20. What rights does an application confer?
The application can be cited against, or used to oppose, a subsequent conflicting application.
21. What is the legal effect of a registration?
The registrant can sue for infringement and it will be cited against conflicting applications.
22. Can an application be opposed or cancelled by third parties?
Yes. Opposition to an application must be filed within two months from publication and on grounds including nondistinctiveness, deceptiveness, conflict with prior rights or non-compliance with statutory requirements.
23. Can an application or registration be assigned?
Yes. Consult a Canadian trademark attorney.
24. Must an assignment include goodwill?
No. The assignment may be either with or without goodwill.
25. Does an assignment have to be recorded?
Assignments of applications or registered trademarks should be registered with the Registrar, although it is not mandatory.
26. Can an application or registration be licensed?
Yes. Consult a Canadian trademark attorney.
27. Does a license have to be recorded?
No.
28. What is the territorial limit of a registration?
The territorial jurisdiction is Canada.
29. How long does a registration last?
The term of registration is 15 years from the date of issue, and is renewable for like periods thereafter.
30. What is required to renew a registration?
Payment of a renewal fee is the only requirement.
31. Is it necessary to indicate a trademark registration on goods or services?
Although marking is not compulsory, it is recommended; e.g., ?or 揗C?(搈arque de commerce?, the French equivalent.
32. Does the International Classification System apply?
No.
33. Is your national office accessible online?
The national office is accessible at www.strategis.ic.gc.ca. |
