How to Trademark a Name in Canada

By Josh Gerben, Esq.

Many business owners looking to move into the North American marketplace start with the United States; however, once established in the US, it may be a worthwhile endeavor to set your sights on the neighbor to the north. Canada’s vastness in both size and economy make it a logical next step when building your worldwide intellectual property portfolio. In order to trademark your business name in Canada, you should first decide how you would like to file, consult with a trademark attorney, and stay on top of your trademark maintenance once it has registered.

Madrid Protocol vs. National Filing

There are a few different ways in which you can file a trademark application in Canada. The first and more obvious method would be by filing an application directly with the Canadian Intellectual Property Office, or CIPO. This option is ideal and cost-effective for companies that are not looking to expand beyond North America and have already obtained trademark registrations within the US for their name and branding.

Alternatively, if your business may be interested in broadening their international scope, filing a Canadian trademark application through the Madrid Protocol may be more appealing. The Madrid Protocol is a treaty that allows applicants to simultaneously file trademark applications in multiple member countries at the same time. Because over ninety nations are members of this treaty, filing through the Madrid Protocol is an economical and efficient option for a business that may be seeking a trademark registration in multiple countries at once.

Hiring an Attorney

Regardless of the filing method you choose, it is in your best interest to enlist the assistance of an experienced intellectual property lawyer for the Canadian application process. Many US trademark attorneys already have established relationships with Canadian trademark agents, which can help facilitate the application process should you choose to file through CIPO. On the other hand, having a lawyer on your side is just as crucial if you choose to file through the Madrid Protocol–this procedure can be quite intricate, and your attorney will have knowledge to effectively guide you through and allow you the best chance of success for each nation you apply within.

Furthermore, an attorney can aid in one of the most significant steps of the application process: performing a clearance search prior to applying. These searches will scour the Canadian register for pre-existing trademarks that may pose a risk to the registration of yours; this allows you to have a full risk assessment prior to submitting the application, giving you a good idea of whether or not your selected trademark will have a substantial chance of registering. An attorney can either perform this search for you or arrange for one to be performed through a Canadian trademark agent.

Lastly, once your trademark has been selected and the search returned, your attorney will help prepare and file the trademark application. After submission, they can check on the status of the application and track any responses or oppositions that may have been filed. Being able to inquire about the application’s status is especially helpful in Canada, as the total turnaround time from initial filing to achieving registration has grown exponentially. Currently, most applications are pending for about two years before they are granted registration. Because of this huge time investment, it is incredibly useful to have an attorney that can check in and ensure that everything continues running smoothly. At the time of registration, there is also a registration fee due to CIPO, which your attorney can also facilitate.

Maintaining your Registration

Once your Canadian registration has been obtained, the trademark owner must maintain their rights and active trademark registration by filing renewals. In Canada, these renewal filings are due on the ten-year anniversary of the initial registration date and every ten years thereafter. Within the renewals, the owner must demonstrate that the trademark is being actively and consistently used in connection with its goods and services within the Canadian marketplace. Your trademark attorney can assist with tracking these renewal deadlines, filing the renewals, as well as policing the Canadian trademark registry for marks that could potentially conflict with yours.

If you are interested in filing a Canadian trademark application or perhaps maintaining an existing registration in Canada, please be in touch with an attorney at Gerben IP today. With monitoring services, renewal tracking, and connections to excellent Canadian trademark agents, we are well-versed in the Canadian trademark process and happy to help you expand your IP portfolio beyond our northern border.

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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.