Trademark Application Process
Many companies are interested in knowing what the trademark registration process looks like, before embarking on a filing project. The following is a visual overview of the Canadian trademark registration process, and the approximate time frames associated with the various steps in the process:
- Trademark search: the first step in the trademark process is typically to conduct some clearance or searching, to determine if there are any previously filed or registered trademarks or other relevant items in the resources that are searched by the trademarks office that would pose problems to the registration of your trademark.
- Filing a trademark application: if the results of the trademark search step are positive candidate is determined to proceed with the protection of your trademark, a trademark application is filed before the Canadian Intellectual Property Office. The trademark application outlines the details of your claim to rights in the trademark, including delineating the classes of products or services in respect of which you wish to protect the trademark, and the details of any prior use etc.
- Examination of the trademark application: following the filing of a trademark application by an applicant, an internal examiner at the Trademarks Office will conduct an internal search of the records of the office to determine if in their view the trademark is registrable within the channel of trade outlined in the application, both in terms of the general registrability criteria outlined in the Trademarks Act, as well as in terms of any prior rights in the trademark register which may indicate a possibility of consumer confusion. If the Examiner determines there are issues in terms of registrability, they will issue an objection and the applicant has an opportunity to respond.
- Approval and advertisement: following the examination of your application if the examiner is satisfied that the trademark is registrable for use by the applicant in respect of the wares and services outlined in the application they will issue an approval notice. Following the approval notice there will be some formalities completed to allow for publication of the application in the Trademarks Journal. Publication of the application provides public notice of the details of the application as well as the fact that the Office has determined the application and the trademark to be registrable.
- Public opposition of the application: Publication of the trademark application provides an opportunity for members of the public who may feel that they have conflicting or superior rights to a confusingly similar trademark in the same channel of trade, or who feel that there other bases on which the trademark application is not registrable, to file an objection or an “opposition” to the application. There is a public opposition period of two months following the publication of the trademark application, within which an opposition can be filed. If an opposition is filed the opposition process can take at least 18 months to be resolved. If no opposition is filed, the matter will move forward to allowance.
- Finalizing the registration: Following the expiry of the public opposition period in respect of a trademark application, the applicant can finalize their registration by payment of any final fees and satisfying any other final formalities. Once the registration is issued by the Canadian Intellectual Property Office, it is renewable in 15 year terms.
You need to file your trademark application in whichever countries or regions you wish to be protected but there is some level of international cooperation between countries and regions in terms of providing priority rights etc.
Foreign registration filing basis
In many countries it is possible to file application for protection of a trademark based upon registration or adoption and use of the trademark in a foreign jurisdiction – for example you can file a trademark application to protect a trademark in Australia that has to date been registered and used in Canada. This gives us the ability in certain circumstances to protect trademarks that are not yet in use and there is no particular market entry plan for a trademark in the foreign market, but you wish to preserve your rights in the trademark and seek protection as quickly as possible.
What this international treaty allows is for us to file an application in Canada and to defer foreign filings for up to six months without losing your filing priority, since what we can do within that six month filing window is to file in other jurisdictions of interest and claim rights and priority based upon your earlier Canadian filing.
If you wish to be certain of the availability of a trademark in multiple countries and you plan on relying on a Paris convention filing strategy it is potentially relevant to seek to clear the trademark in all countries of interest at the time of initial searching.