5 Steps to Register Your Trademark in Canada

By Josh Gerben, Esq.

Steps to Register a Trademark in Canada:

1. Choose a strong mark
2. Hire a trademark attorney
3. Complete a comprehensive trademark search
4. File your application
5. Respond to CIPO requests

Many US trademark owners see the benefit of Canadian trademark registration.  With its close proximity and millions of potential customers, it may make sense to begin your international trademark registration in Canada.  While the process to register internationally may seem overwhelming at first, it’s not as challenging as you may think.  Follow these 5 steps to register your trademark in Canada:

Choose a Strong Mark

A trademark is something that represents your brand.  In Canada, business names, logos, slogans, and even color schemes can all be registered trademarks.  A trademark’s strength is determined by its distinctiveness.  The stronger the trademark, the easier it is to enforce its exclusive use.  Trademarks can be divided into different categories based on their distinctiveness:

• Descriptive and generic words simply describe the goods or services being offered. CIPO and other trademark offices around the world will not typically approve this type of mark, because it is so commonly used, it would be hard to enforce exclusive rights.  An example of this would be a salon called Hair Cuts.
• Suggestive marks give a hint of the products or services being offered, without explicitly stating them. Burger King is a well-known example of a suggestive mark.  While these are slightly stronger than descriptive or generic marks, it may be challenging to prevent similar marks from being registered.
• Arbitrary marks are familiar words that have no relation to the goods or services being offered. Amazon and Apple are examples of this type of mark.  Arbitrary marks are considered strong, but often need additional marketing to educate consumers about what type of business it is.
• Fanciful marks are the strongest type of trademark. These are invented words with no connection to the product or service offered.  Both Kodak and Pepsi are considered fanciful marks.  Much like arbitrary marks, these trademarks are considered very strong but may require additional efforts to educate the public about what is being offered.

Hire a Trademark Attorney

According to Canadian trademark law, anyone wishing to register a trademark in Canada must either have a Canadian address or work with a Canadian trademark agent.  A list of approved trademark agents can be found on the Canadian Intellectual Property Office website.  Working with an agent will help to ensure that your application adheres to Canadian guidelines and should also help the process to run smoothly.  While not all of these trademark agents are practicing attorneys, it is best to choose an agent with extensive experience registering and enforcing trademarks in Canada.

Aside from adhering to the law, working with an experienced trademark attorney has several additional benefits.  Many legal decisions need to be made throughout the registration process, from conducting a trademark search to choosing the correct classes of goods and services and responding to oppositions or cancellations.  For someone without trademark experience, these tasks could become overwhelming and time-consuming.  Partnering with a trademark attorney ensures that your registration can be processed smoothly while you continue to grow your business in Canada.

Complete a Comprehensive Trademark Search

The Canadian Intellectual Property Office will not register a trademark if a confusingly similar mark is already in use.  For this reason, it is important to conduct a comprehensive trademark search before you submit your application to CIPO.  While it can be frustrating to learn that a similar mark exists, it is best to know this before you submit your application and pay your fees.  If your search does determine that another mark is in use, you will have the ability to rework your mark before your application is in the hands of a CIPO examiner.

Work with your trademark attorney to ensure that your trademark search is as comprehensive as possible.  Many business owners wish to cut corners by conducting a trademark search on their own, whether through google, legal sites, or even the CIPO website, only to learn later on that their search didn’t accurately reveal similar matches.  Unfortunately, these searches typically reveal only exact matches to a mark, while trademark disputes arise, not from exact matches, but from similar matches.  A search conducted by a trademark attorney will find both exact matches and similar matches to your trademark.

File Your Application

Once you can be sure, through a comprehensive trademark search, that a similar mark has not already been registered in Canada, you can then move to file your application.  The most common way to submit a trademark application in Canada is to file directly with the Canadian Intellectual Property Office.  Simply go to the CIPO website, and submit your application, along with any other requested documents, and pay your application fee.  You will then receive your application number and proceed to the next phase of trademark registration.

If your strategic trademark plan includes registrations in many countries, you may want to consider an alternative application process.  The Madrid Protocol is an international treaty that allows registrants to complete a single application in their home language that can then be applied to more than 90 member countries, including Canada.  While the Madrid Protocol streamlines the international application process, it does not guarantee that your mark will be approved in Canada.  The decision to approve or reject a trademark application is still made by CIPO.

Respond to CIPO Requests

Once your trademark application has been submitted, you may be contacted by CIPO for various reasons.  For instance, the examiner assigned to your application may have questions or need more clarification about certain aspects of the application.  Occasionally, all that is needed is a phone call to verify information, but often, you will receive more formal notice of the issue.  You will then have six months to respond to the examiner’s concerns or risk having your trademark registration canceled.

After the examiner has approved your trademark application, the mark will then be published in the Trademarks Journal.  If anyone opposes your registration once it appears in the journal, they have two months to complete a Statement of Opposition with CIPO.  You will then have two months to respond to that opposition.  In any case, if CIPO contacts you, it is imperative that you respond before the set deadline.  This ensures that the application process can continue moving forward toward registration.

How to Register a Trademark in Canada

Gaining trademark protections in Canada is easier than you think. Begin by choosing a strong mark, one that isn’t generic or suggestive, but rather made up or completely unrelated to the goods or services you plan to offer. Next, hire a trademark attorney. This is not only needed to adhere to Canadian trademark law, but it also assists with your overall registration process. Work with your attorney to complete a comprehensive trademark search, and if no similar trademarks are found to be in use, proceed with your trademark application. Finally, be sure to respond to any notifications from CIPO in a timely manner. Follow these steps to secure your Canadian trademark registration and begin protecting your brand in Canada today.

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Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.