Trademarks FAQ

Can I file a trademark application that covers the whole world?

There is no such thing as a global trademark application.  There is an international trademark treaty called the Madrid Protocol, which Canada is presently slated to enter in 2019, which does provide a streamlined international filing process.  Until Canada fully accedes to that treaty however, it is necessary to file your trademark application in each country in which you wish to protect your trademark.  It is also possible on a regional basis in certain cases to file a trademark application which protects you in a number of countries – for example in Europe is possible to file what is called a CTM trademark application which does give you the ability to provide or secure regional level trademark protection for your trademark throughout Europe.

Is my trademark protected if I don’t file an application?

A trademark owner can acquire a significant degree of rights in the trademark simply by its adoption and use in the marketplace.  Registration does present some significant benefits in terms of public notice and the enforceability of a trademark.  Maintaining an accessible list of your registered and unregistered trademarks is a good key business function.

When should I file my trademark application?

Public use of your trademark, at least in the Canadian context, starts to create or crystallize common-law rights in the name that you choose to use, which can be formalized by registration is a federal trademark.  There is a benefit to filing your trademark application sooner rather than later however insofar as it will create public notice of your intentions and claimed rights in the trademark as well as potentially creating a bar in the trademark register to a following third party who wished to protect a similar trademark in your channel of trade.

How long does a trademark registration last?

At the present time, a Canadian trademark once registered pursuant to the Trademarks Act, remains registered for 15 years from the date of registration. The registration can be renewed indefinitely, 15 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.

Can a sound be registered as a trademark in Canada?

On March 28, 2012, CIPO announced that they would accept applications for the registration of sound trademarks.  This position in the Canadian office follows the direction or position of trademark authorities in other countries, where sound trademarks have been registrable for some time.