Commencing in 2012 the Canadian trademarks office announced that they would begin accepting applications for the registration of sound trademarks. This announcement and position at that time followed the direction or position of trademark authorities in other countries were sound trademarks had previously been registrable for some time .
How long does my trademark registration last?
At the present time the Canadian trademark, once registered pursuant to the Trademarks Act, remains registered for 10 years from the date of registration or renewal. A Canadian trademark registration can be renewed indefinitely, 10 years at a time, so long as the trademark is still in use in commerce. Terms and registration validity rules vary from country to country. As you expand the geographic scope of your trademark coverage, monitoring registration terms becomes more difficult – this is something we can help with if you need a hand.
When should I file my trademark application?
Public use of your trademark in Canada starts to create or crystallize common-law rights in the brand that you are choosing to use. Filing a trademark application in the Canadian trademark office will formalize your rights in your mark. There is a benefit to filing your trademark application sooner rather than later in so far as it will create public notice of your intention and claimed rights in the trademark, as well as potentially creating a bar in the trademark registry to a third party who wished to adopt a similar trademark in your channel of trade in the future.
Is my trademark protected if I don’t file an application?
A trademark owner can acquire significant rights in their trademark in a market simply by adopting and using the mark in the marketplace. Registration does present significant benefits in terms of public notice and the enforceability of a trademark in Canada and many countries. If you are planning on using your trademark on a nonregistered basis, some basic record capture to be able to prove use of the trademark at some point in the future as required is helpful. We can assist you in the development of these practices and a trademark inventory should you wish to do so.
Can I file a trademark application that covers the whole world?
There is no such thing as a global trademark registration. There are a couple of commonly used procedures and approaches to securing international trademark coverage, including filing individual applications in countries of interest or the filing of an application for international registration pursuant to the Madrid Protocol which Canada entered in mid 2019. The Madrid Protocol provides a streamlined international filing process.
It is also possible to protect your trademark on a regional basis in certain areas of the world, including in Europe for example.
Planning for protection of your trademarks in foreign jurisdictions as you expand the geographic footprint of your market is important in your overall business plan.
