How Long Does a Trademark Application Take in Canada?
The Timeline of a Trademark Application in Canada Explained
So you’re thinking about filing for a trademark! How exciting! We’ve put together a timeline of what you should expect throughout the process of your registration to try to make the experience easy to understand.
Step 1: Comprehensive Name Search
To begin your trademark journey, you want to make sure you are not using the exact same or similar trademark that has already been registered. You can do a base level name search on your own through the Canadian trademarks Database website, but it’s always a good idea to engage with a lawyer or trademark agent so a more comprehensive search can be completed. The more extensive the search is, the better understanding you will have about whether your mark application will be successful.
It seems fairly straightforward to say, but the more unique the trademark name is, the greater chance you will have for a successful search and registration to follow!
STEP 2: Registration
Getting all your details in order to provide to your Trademark Agent! Having a package ready for your Agent with all the details of what exactly you’re wanting to trademark, will make the process a lot more smooth and seamless for both parties. Ask yourself, What is it exactly that you’re wanting to trademark? Your lawyer should also be able to provide you with a questionnaire of what information they need.
The trademark journey can be a long one (up to 30 months!), so being prepared and having all your information in order can help speed along the early stages for quick filing!
STEP 3: Filing
- When filing, it is important to include the class of goods or services you use/have. You can have more than one of each, but be aware that the price for filing does increase based on the number of goods and/or services you include. Your trademark’s success can sometimes be dependent on the class you’re in, so really think about what it is exactly that you’re selling or offering.
- Where do you want your trademark registered to? You must include your full legal name and address.
- The trademark itself: decide whether you want to file solely a word mark, a design mark, or both.
- Permitting that everything is in order with your trademark application, you will be provided with an application number from CIPO and a filing date!
STEP 4: Examiners Report
This is when the Examiner will write back to you in a report regarding the health of your trademark and any possible infringements or confusion with existing marks. You should expect for your Examiners report to take anywhere from 15 to 18 month to come through, and once you receive it you will have 6 months to respond to any questions contained within the report.
STEP 5: Rejection or Acceptance
If your trademark is approved by CIPO (the Canadian Intellectual Property Office) you will get notice of its success. If CIPO refuses your trademark then they will provide you with notice and an explanation as to why it was rejected. If you feel that your trademark was wrongfully rejected, an appeal could be in order, otherwise, take a thorough look at the Examiner’s explanation for rejection and tweak your application for refiling.
STEP 6: Advertisement and Opposition Proceedings (if necessary)
Once you have a successful trademark application from CIPO, it will be published to the Trademarks Journal on the CIPO website. It is now public record that you have an accepted trademark (yay!), but this is also the time where anyone can oppose the solidified approval of your mark. Your application will be advertised for 2 months.
If someone opposes the registration of your trademark you will be notified, and both yourself and the opposing party will need to gather evidence and written arguments to support the acceptance (or rejection respectfully) of the mark. Opposition can become a lengthy and time consuming process, so it is something you should prepare yourself for. We always hope when filing a mark we don’t encounter this stage, but keep it in the back of your mind.
STEP 7: What happens after your Trademark is Registered?
Think about having a Trademark as being the league champions! It’s amazing because you OWN the trademark now – you’re the WINNER. However, with the mark also comes responsibility. It is now your job (or your lawyers) to always be on the lookout for possible infringements and building a defence to always protect your mark. You must show use of your trademark if you are ever put in an infringement position, so exercise those rights you put so much effort into having one! Examples of use could include publication on your website, and including the mark on physical and digital products.
Maintaining your trademark is also something you want to keep in the back of your mind as well. Trademarks come up for renewal every 10 years and if you don’t renew your trademark, the trademark will be expunged from the register (meaning it will disappear). Luckily, the Registrar will send you notice of your renewal payment deadline. Expungement of a trademark doesn’t necessarily mean that someone can jump right in and register the mark for their own purposes. If the mark has expired but you’re still using it, you can show evidence of this use to the registrar to reinstate the mark. If you choose not to do this, there is always the possibility of the invalidation of your mark and someone else can trademark – this is up to the Examiner.
If you have any concerns about the longevity of your trademark and the legal protection you have for specific goods or services, it’s always best to stay in contact with your lawyer or Trademark Agent so you can continue to use your trademark successfully for years to come!
PS: Things to Be Aware About!
The risk of expungement of your trademark increases when your mark loses distinctiveness, you completely abandon the mark, or you simply don’t use it.
Want to know the Best Practices on Choosing a Trademark Name?
Check out: The Best Practices to Choosing a Trademark Name
Author Credits
Paige Bonner is a final year law student in the UK and a 2021 EFV Legal intern. She is specializing her studies towards intellectual property and trademark protection, and can always be found attending global trademark conferences. Connect with her on LinkedIn.
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