How do I register my trade-mark?

You can register a trade-mark by filing an application for registration with the Trade-marks Office in Gatineau, Quebec. Your application then goes through a stringent examination process to make sure that it meets all requirements of the Trade-marks Act. Keep in mind that in most instances your trade-mark must be used in Canada before it can be registered. While your application may be based on "proposed use," you must put your trade-mark into use before registration can occur. In the following sections, we will outline the steps towards registration.

Business Development Centre provides complete trademark application preparation and filing services.

How much does it cost?

The basic federal government costs are:

• $250 (non-refundable) if submitted electronically or in any other case $300 for each trade-mark applied for;
• $200 for a certificate of registration, if your application is successful.

These costs do not take into account the fees of an agent, if you are using one.

You can view Trademark Filing Packages and Prices here

Five-step examination process

When the Trade-marks Office receives your application, it does the following:

1. Searches the trade-marks records to find any other trade-mark that may come into conflict with the one you've submitted and, if one is found, informs you of it.

2. Examines the application for compliance with the requirements of the Trade-marks Act and Regulations and informs you of requirements which are not met by the application.

3. Publishes the application in the Trademarks Journal, which is issued every Wednesday.

4. Allows time for opposition (challenges) to the application. Anyone may, upon payment of $750, file a statement of opposition with the Registrar. After considering the evidence filed by either or both parties, the Registrar decides whether to refuse your application or reject the opposition. The parties are notified of the decision and reasons why.

5. If no one files an opposition to your application, the mark is allowed. Upon payment of the $200 registration fee and the filing of a declaration of use in the case of a proposed use trade-mark application, your mark is registered.

How long does registration last?

Your registration is valid for 15 years, and you can renew the registration every 15 years thereafter upon payment of the $350 renewal fee (if submitted electronically or in any other case $400). Note, however, that your registration may be the subject of a section 45 proceeding before the Trade-marks Office or an expungement proceeding before the Federal Court of Canada (see Expungement of a trade-mark registration in the Other Procedures section).

Foreign registration

Registering your trade-mark with the Trademarks
Office protects your rights in Canada only. If you are selling wares or services in other countries, you should consider registration in each of those countries. Contact a trade-mark agent or the embassy of the country in question for information on foreign registration. Your trade-mark will qualify for registration as long as it does not conflict with Canada's Trademarks Act, which sets out the requirements for registration. Sections 9 through 12 of the Act deal with the kinds of marks you may not register. Become familiar with these restrictions, summarized on the next page. It will help ensure a successful application.

Names and surnames

A trade-mark will not be registered if the trademark is primarily your full name or surname, or that of another individual (e.g. John Doe or Jane Smith, Wong, Cohen, etc.). An exception to this rule is if you can prove that your wares or services have become known under the name "Smith" or "Wong" or "Cohen," so that the word now connotes more than a person's name or surname in the public's mind.

There are numerous examples of personal names that have become associated with a food, drink, or other product and are now registered trade-marks. Another exception is if the name or surname has meaning other than just as a name or surname, i.e., it is also a recognizable word. Suppose your last name were, in fact, "Brown." You could register the word for your ice cream business as long as there were no other reasons to disqualify it.

Clearly descriptive

You may not register a word that clearly describes a feature of the wares or services. For example, "sweet" for ice cream, "juicy" for apples, and "perfectly clean" for dry cleaner services could not become registered trademarks.

All good apples could be described as "juicy" and all ice cream as "sweet"; these are inherent characteristics of the wares. If you were allowed to register these words, no other apple sellers or ice cream vendors could use them to promote their goods, which would be unfair. Again, if you can establish that "Sweet Ice Cream" has become so well known that people think of your product (and no one else's) when they hear the words, you might be able to register the trade-mark.

You can view Trademark Filing Packages and Prices here
Trademark Search is available here for only $39.95
Trademark Registration is available here

Check your e-mail tomorrow for Part 4 of the
Guide to Canadian Trademarks.

If you can't wait to learn about trademarks in Canada, you can order
the entire Guide to Trademarks and download it right now for $9.95 plus tax.