With one of the largest economies in the world and the top ten trading nations, Canada is a highly globalized country in the world. With a strong financial system and a technology developed country with an approximate GDP worth trillions of dollars, Canada is the next stop destination for business and trade. The business always seeks to have strong TM protection, since this TM represents the brand value. As specified, Canada provides an attractive incentive for research and development, which ultimately benefits the business, it is highly imperative that the business needs optimum protection for their IP and especially their TM.  This technologically advanced nation depends on the IP system for scientific advancement and economic strength. Providing strong IP protection in Canada makes the business help in establishing a strong foundation and work for the betterment of the economy as well as profiting their business. 

Getting your mark ready

For your mark, it is necessary not to make any mark that is generic and are common. The Canada IP office states certain marks which cannot be registered such as

• Names and surnames
• Clearly descriptive marks
• Deceptively misdescriptive marks
• Place of origin
• Words in other languages
• Confusing with a registered or pending trademark
• Trademarks that are identical to, or likely to be mistaken for, prohibited marks

Not only to this, but the Canada IP office also states that the trademark will not be registered if it consists of a plant variety denomination (when a right is granted to the owner for control over the multiplying and selling of reproductive material for a particular plant variety) or is a mark so nearly resembling a plant variety denomination that it is likely to be mistaken for it, where the application covers the plant variety or another plant variety of the same species. Moreover, it also specifies that the trademark should not indicate the geographical origin of a wine, spirit, or agricultural product or food unless your goods are from that geographical area. For example, you could not register the trademark "Okanagan Valley" if the wine you are making is from Ontario.

Registration process

Searching the Canadian Trademarks Database is the best way to start with your application. The database covers all the listings of the active and inactive marks in Canada. It is feasible that the trademark must be searched for its different possible version.

For the filing of the Application, the fees are as follows

For the first class of goods or services to which the application relates

• 2020 Fees ($CDN): $ 330.00
• 2021 Fees ($CDN): $ 336.60

For each additional class of goods or services to which the application relates as of the filing date

• 2020 Fees ($CDN): $ 100.00
• 2021 Fees ($CDN): $ 102.00

Fees for an application for the registration of a trademark, if the application and the fee are submitted through any other means

For the first class of goods or services to which the application relates

• 2020 Fees ($CDN): $ 430.00
• 2021 Fees ($CDN): $ 438.60

For each additional class of goods or services to which the application relates as of the filing date

• 2020 Fees ($CDN): $ 100.00
• 2021 Fees ($CDN): $ 102.00

A complete application includes:

• the name and mailing address of the applicant
• a representation or description, or both, of the trademark
• a statement in specific and ordinary commercial terms of the goods and services associated with the trademark
• the statement of goods and services grouped according to the Nice Classification
• the application fee
• any other requirements specific to the type of trademark sought to be registered

After the Office receives your application and grants it a filing date, we:

• Search the trademark database to find any registered or pending trademark that is confusing with your trademark (if we find one, we will inform you)
• examine the application to make sure it does not contravene the Trademarks Act and Regulations, raise any  objection to register your trademark and inform you of any outstanding requirements
• publish the application in the Trademarks Journal after which the public may file an opposition (challenge) to your application
• register your trademark if no one opposes your application (or if an opposition has been decided in your favor)

With the final acceptance, the TM is registered for the period of 10 years based on the renewal fees to be filed every 10 years. The experienced professional at the IPLF has helped clients worldwide file their TM in Canada. The team has successfully led the whole process leading to the grant of the Trademark.

Author: Saransh Chaturvedi (an advocate) currently pursuing LLM from Rajiv Gandhi School of Intellectual Property Law (IIT Kharagpur).  In case of any queries please contact/write back Global Patent Filing us at support@globalpatentfiling.com.