2017-07-20
Trademark law is a complex subject and requires a close study. It is necessary to register trademarks if you want to protect your brand name federally. However, if you don’t have the time to read-up, we have prepared a list of the frequently asked questions about trademarks:
What is a trademark?
A trademark is a word or phrase, sounds or designs used to distinguish the goods or services of a person or organisation from others and a way to claim and protect the rights to one's brand, including the goodwill and reputation of the brand. A trademark can be registered by individuals, companies or partnerships, provided they comply with The Trade-marks Act and Trade-marks Regulations.
What is the difference between a registered and unregistered trademark?
A registered trademark has been examined, confirmed to be distinctive, and is protected under the Trade-marks Act. It is direct and conclusive evidence as regards to the ownership of a trademark in court. An unregistered trademark is governed by common law and valid only in the geographical area where it has been used. The owner has to prove that his brand has developed sufficient goodwill.
What can and cannot be registered as a trademark?
One can register any trademark or name which complies with the Trade-marks Act.
One cannot register:
- names and surnames
- words in other languages and words that represent a geographical location known to be the place of origin of goods or services.
- words or designs that could be confused with a registered, pending or a prohibited mark.
- a trademark similar to official marks unless one has acquired permission from the organization that controls the mark.
- What does one need to consider before filing for registration?
One should conduct a search of the Canadian Trademarks Database. It is recommended that you hire a trademark lawyer or agent for help throughout the entire process.
What is the period of the trademark registration process?
Generally, it takes approximately 12 - 18 months to complete the registration process. This is assuming that no major issues arise.
How much does registration cost and how long does registration last?
The government fee is $250 when the application is filed and $200 at the end of the process. Registration lasts for 15 years with the option of renewal which costs $350. Additional costs can be expected when hiring a trademark agent.
What are the steps to acquire a trademark?
- Application
A trademark application is prepared and filed with the trademarks office.
- Examination
Within 6 - 10 months, an examiner performs a search of trade-mark records for conflicting marks, and determines the registrability and compliance of the goods or services with standard regulations. Upon the issuance of an Examiner's report, applicants may be required to submit revised applications.
- Approval
Once an Examiner is satisfied that the application meets all of the requirements for registration, it is approved for advertisement.
- Advertisement
The information is published in the Trade-marks Journal. Should opposition proceedings occur, the application process can be delayed for 18 months or more.
- Allowance
If the office receives no objection within 2 months of publication or if you are successful in an opposition, CIPO issues a notice of allowance of the application for registration.
- Registration
Upon receipt of the registration fees, the office issues a certificate of registration for each duly registered trademark.
Why is it important to preserve evidence of use?
If you are operating under an unregistered trademark, you may need to prove both long-term ownership and accumulated goodwill to receive any protection. Hence evidence is essential. Additionally, it can be used to prevent expungement or cancellation of your trademark registration for non-use.
What happens if I haven't started using the trademark I applied for?
A trademark must be used prior to registration in Canada. If you do not use your trademark in a commercial manner within a certain period of time from the allowance of your registration, your application will be abandoned, and you will have to go through the registration process all over again.
Does one have to be a citizen or resident of the jurisdiction in which the trademark application is filed?
Not necessarily, but if you are applying for registration in Canada and you are living in a country other than Canada, you must appoint someone in Canada to whom the Registrar can correspond with. This is often a trademark agent.
What measures can be taken if you are accused of infringement or your trademark is imitated?
Legal action needs to be taken if you come across a trademark or a trade name that could be confused with your mark. If you are accused of infringement, an arduous legal battle may lie ahead and a trademark lawyer should be contacted.
As a legal firm, we are often frequently asked questions about trademarks, but there are too many to cover in a single blog post. Understanding the complexities of trademark law is complex and it is advisable to consult with a trademark lawyer or agent if you have any questions.
