Application

The principal document in the registration process is your application form. You must file a separate application for each trade-mark you wish to register, although one application may cover both wares and services or a number of wares or services.

A complete application includes:

1. the appropriate application form filled out by you or your agent;
2. the application fee; and
3. a formal drawing where appropriate.

Foreign applicants

If you are applying for registration of a trademark
in Canada, but reside in a country other than Canada, you must appoint a representative for service to whom the Office correspondence will be directed.

Filing date

When your application arrives at the Trademarks Office, the Office staff checks it to make sure it is complete. If anything is missing, they will contact you to ask for documents or information.

Once this process is finished, the Office will acknowledge receipt of a completed application and assign a filing date, that is, the date that your application is officially filed. (Do not confuse this date with registration.) This filing date is particularly important for proposed use trade-mark applications, since it is the date the Trade-marks Act deems to be the entitlement date of your trade-mark application.

After the formal filing you may make minor modifications in your application. Major changes, however, would entail the trouble and expense of another filing. To avoid this, you or your agent must take great care in preparing your application.

Search and research

Trade-marks Office staff conduct a thorough search of the records to verify that your trademark cannot be mistaken for anyone else's. They also conduct research to determine whether your mark fulfils all the criteria of the Trade-marks Act, in other words, that it does not fall into any of the categories discussed in the section, "Making sure your trade-mark can be registered." The results are considered by the Trade-marks Examiner assigned to your case.

Examination

The Examiner studies the data and decides whether your application can be accepted. If there are doubts about your case, the Examiner will notify you of the objections. You then have opportunities to respond. If your answers still fail to satisfy the Examiner, you will receive a letter informing you that your application has been refused and explaining the reasons why. In the event of refusal, you have the right to appeal to the Federal Court of Canada.

Disclaimers

The Examiner may request that the applicant disclaim the right to the exclusive use, apart from the trade-mark, of a portion of the trade-mark if the appropriate disclaimer statement has not already been included in the application.

Abandonment

If you fail to prosecute your application (take all the steps necessary to complete the process), your application may be considered abandoned. Before this happens, you will be notified and given an opportunity to remedy the situation within a specified time period. If you do not respond appropriately, your application will be considered abandoned and you will have to reapply with the requisite fee to pursue the trademark.

Pre-publication search

Let's suppose your application for the trade-mark "Northpole" has been approved for advertisement in the Trade-marks Journal. The Examiner could find no grounds to disqualify it. Does that mean registration is completed? No. There are still hurdles to overcome. The Office does another search, called Pre-publication Verification, to ensure that in the intervening months, no one has registered or applied for registration of a trade-mark that conflicts with yours. The Office will again correspond with you if necessary and seek your comments on any such trade-mark.

Advertisement

Suppose the Pre-publication Verification has not unearthed any new objections for "Northpole." Now your application is ready for advertisement in the Trade-marks Journal. This journal, published each Wednesday, contains details about every application which has been approved for advertisement. When an application is advertised, it allows members of the public an opportunity to raise objections to pending applications prior to registration. It is another means of weeding out trade-marks that conflict with those of other owners. The Journal entry for "Northpole" is a summary of the information on the trade-mark and includes your name, address, file number, filing date, the trade-mark (the word mark, symbols, etc.), whether it is based on "use" or "proposed use," which goods and services it is used for and any other claims (colour claims, disclaimers, etc.).

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 7 of the
Guide to Canadian Trademarks.