Trademarks (with the 7 don'ts to apply)
The Canadian Intellectual Property Office (CIPO) defines a trademark as a combination of letters, words, sounds, or designs that distinguishes a company’s goods or services from others in the marketplace.
What is a trademark?
A trademark is very important to a company. It is the company’s unique identifier, not only for the actual goods and services it sells but also for the company’s reputation and brand. We have come to associate the golden arches with McDonald’s and the check with Nike. Doritos has aired a commercial where they do not ever mention the word “Doritos” but we know it is a Doritos commercial because we know the company’s brand.
Ordinary Trademarks
An ordinary trademark includes words, designs, tastes, textures, moving images, mode of packaging, holograms, sounds, scents, three-dimensional shapes, colours or a combination of all of these which is used to distinguish the goods or services of one person or organization from others in the market. For example, if you want to start a card company called MagicCards, if all legal requirements are met, you can register these words as your trademark.
Certification Marks
A certification mark can be licensed to many people or companies to show that certain goods or services meet a defined standard. For example, the Woolmark design owned by Woolmark Americas Ltd is used on clothes and other goods to show that that specific item is made out of pure wool.
Trademark vs. Trade Name
A trade name is the name of your business, such as ABC Company. Under the Trademarks Act, you can register your trade name as a trademark, however, this is only possible if you also use your trade name as a trademark. This means you use your trade name to identify goods or services. For example, “Smarties” is both a trade name and a trademark as the company uses its trade name to identify their product. The CIPO uses the following example to illustrate this: *If we suppose that you own an ice cream business and that your company is named “ABC Ltd.”
Example 1: People know your ice cream under the name “ABC Ltd” because you use this name as a trademark. Therefore, you are able to apply to register your trade name “ABC Ltd” as a trademark. Example 2: People know your ice cream by the name “North Pole,” which is what you use to promote your product. Even though your company’s name is “ABC Ltd,” no one identifies your ice cream with this name. In this case, the name “ABC Ltd” is being used as a trade name and not as a trademark.
Registering your trademark
When you register your trademark with the CIPO, you are granted sole right to use the mark across Canada for 10 years.*You can renew your trademark every 10 years after registering. A registered trademark is one that has been entered into the Register of Trademarks. Once this has been, the trademark holder is provided with a certificate of registration which serves as direct evidence of ownership of the trademark. However, you do not have to register your trademark to own it. By using a trademark for a certain period of time, under common law, you are granted rights. So why bother registering your trademark? If you use an unregistered trademark and find yourself in a trademark dispute, you can expect to endure a lengthy and expensive legal battle over who has the right to use it. If you do not use your trademark for a long time, your registration may be removed from the Register of Trademarks, making it more difficult to prove legal ownership.
Registering trademarks outside of Canada
Registering your trademark with the Registrar Office protects your rights in Canada only. If you wish to market your goods or services outside of Canada, then you may want to consider getting a trademark registration from the countries you wish to operate in. International Trademarks under the Madrid Protocol
The Madrid Protocol offers businesses and innovators the ability to obtain trademark protection in over 100 countries by filing a single international application with the World Intellectual Property Organization (WIPO). The fee is made in Swiss Franc (CHF) in order to make the process simple and reduce costs. Applications using this system are reviewed under the legislation and laws which exist in each of the designated countries. To file an application, the Madrid e-Filing system must be used. This system is accessible on the CIPO’s website and provides an easy step-by-step process which also automatically calculates fees. The International Bureau of WIPO will recognize the international registration date as being retroactive to the date the Registrar receives the application for international registration if it can be confirmed by the CIPO examiner and sent to the Bureau within two months of it being received. However, if the Bureau does not receive the international application within the two months, the international registration date is the date which the certified application is received by the Bureau. If the international application meets all the applicable requirements, the Bureau will register that trademark in the International Register. The Bureau will then notify the Offices of the designated Contracting Parties, inform the Office of origin and send a certificate of international registration to the applicant or representative. This does not mean that the trademark is automatically registered. The CIPO is responsible for notifying the Bureau of any changes in the scope of protection in the basic application or registration within five (5) years of the date of the international registration. The same applies if a proceeding (e.g. an opposition) began before the end of the five-year period, as the results may change the scope of the protection in Canada. Ordinarily, if an international registration is transferred a request can be sent to the Bureau using the required form. If the new owner is not able to obtain the signature of the previous owner, the transfer of ownership may be with the Registrar for presentation to the Bureau, but only if the transferee is a Canadian national, living in Canada or has an industrial or commercial establishment in Canada. This request must be accompanied by evidence of the transfer and a statement explaining that efforts to obtain a signature was made. If you wish to add more countries to an existing registration, the owner will need to complete a subsequent designation with the WIPO and pay the applicable fees. The CIPO does not accept or certify these requests.
What can and cannot be a trademark
What you can register
You can register any trademark which does not contravene the Trademark Act. More details can be found here.
What you cannot register
A trademark is generally unregistrable if it is one of the following:
1. Names or surnames
If a trademark is nothing more than a name or surname it cannot be registered. An exception to this rule is if you are successful at proving that your goods or services have become well known under said name or surname so that the word itself has acquired a second meaning in the public mind.
2. Clearly descriptive marks
You may not register a trademark which clearly describes a characteristic or quality of your goods or services. For example, words like “sweet” for ice cream, “juicy” for apples, and “perfectly clean” for dry-cleaner services are descriptive characteristics or qualities. All apples, for example, could be described to be juicy. If you were able to register these words as a trademark, then no other vendor would be able to use them to promote their goods, which would be unfair. However, if you can establish that “Sweet Ice Cream,” for example, has become so well known that people will immediately think of your product and no one else’s, you may be allowed to register the trademark.
3. Deceptively misdescriptive marks
You cannot register a trademark which is deceptively misleading. For example, if you are selling candy that is sweetened with artificial sweetener then you would not be able to register it as “cane sugar.” Or, if you have a courier service which uses ground transportation, you would not be able to register it as “air express.”
4. Place of origin
If your trademark describes the geographical location where the goods or services come from, you may not be able to register it. Allowing you to do so would mean you are the only one who can use the geographical place name, which would be unfair to others who do business in that place. You will also not be permitted to register a word that misleads the public into thinking that your goods or services come from a certain place when it does not. For example, if you had a clothing company and want to name it “Paris Fashions” but the clothes do not actually come from Paris, you would not be able to register this trademark.
5. Words in other languages
You may not register trademarks that are thenae, in any language, of the goods or services associated with your trademark. For example, the word “gelato” means “ice cream” in Italian. You would not be able to register “gelato” as a trademark in association with frozen confections.
6. Confusing with a registered or pending trademark
It is important to be aware of trademarks that are similar to other trademarks which are registered or are subject of a previously-filed application. If your trademark is confusingly similar to an already registered trademark or a trademark which is pending, your application will be refused.
Trademark examiners will consider various factors when deciding if a trademark is confusing, including:
- Whether the trademark looks or sounds alike and whether they suggest a similar idea
- Whether the trademark is used to market a similar good or service
If we return back to our previous example of “North Pole” ice cream we can see how this looks in practice. Suppose another company manufactures and sells frozen-water products under a registered trademark “South Pole.” The public could easily think that the North Pole and the South Pole are made and sold by the same company. This is something trademark examiners would consider, which can mean that North Pole’s trademark application can be refused. You may not register for a trademark which is identical or similar to certain official marks unless you are given permission to do so from the organization that controls the mark. These official marks include:
- Official government designs (e.g. the Canadian flag)
- Coats of arms of the Royal Family
- Badges and crests (e.g. the Canadian Armed Forces and the letters RCMP)
- Emblems and names of the Red Cross, the Red Crescent, and the United Nations
- Armorial bearings (coats of arms), flags and symbols of other countries
- Symbols of provinces, municipalities and public institutions
- Certain subject matters that contain scandalous, obscene, or immoral ideas are also not permitted to be registered as a trademark.
- For example, you may not register a trademark which includes profane language, obscene visuals or racial slurs.
- Portraits and signatures of living people or people who have died within the last 30 years.
Things to watch out for when registering for a trademark
You cannot register a trademark if it consists of a plant variety denomination (when an individual or company is granted the right to control the multiplying and selling of reproductive material for a particular plant variety), or is a mark that closely resembles a plant variety denomination that is likely to be mistaken for it, where the application covers the plant variety or another plant variety of the same species. You also cannot register a trademark that indicates the geographical origin of a wine, spirit, or agricultural product or food, unless your goods are from said geographical area. You cannot register a trademark that contain certain subject matters which are either scandalous, obscene, or immoral in nature. For example, you may not register a trademark which includes profane language, obscene visuals or racial slurs. Portraits and signatures of living people or people who have died within the last 30 years cannot be part of your trademark registration.
Who can apply for registration?
To be entitled to registration of a trademark, an applicant must be a person. This means that they are either an individual, a partnership, a trade union, an association, a joint venture, or a corporation. It is also possible for an application to include more than one persons, for example, “John Smith” and “ABC Company Inc.”
How to file an application:
Before you file a trademark application, it is important that you search the Canadian Trademarks Database. Although this is not mandatory, it will help you know whether or not a similar trademark already exists. To conduct a proper search, you will have to check for different possible versions of the trademark you wish to register. Note, for standard character trademarks (word or words) you should check for all possible spellings, including in French. You can find a tutorial here. A complete application includes the following:
The name and mailing address of the applicantA representation or description, or both, of the trademark A statement in specific and ordinary commercial terms of the goods and services associated with the trademarkThe statement of goods and services grouped according to the Nice ClassificationThe application feeAny other requirements specific to the type of trademark sought to be registered
If you wish to file more than one trademark, a separate application for each must be submitted.
Representation or description
Your application must include a representation, description, or both of the trademark. It must clearly indicate what is the point of the registration.
The representation may contain more than one view of the trademark if multiple views are required for the trademark to be clearly defined. The representation must not exceed 8cmx8cm in size. If your trademark is on colour or if it is claiming colour(s) as a feature, the representation must be submitted in colour, along with a description of the colour(s) and where it appears in the trademark. For trademarks that are sound and/or moving images, an electronic representation and a description of the trademark is required. You can find out more about representation and description requirements for non-traditional trademarks here.
Filing your application
You may file your application and pay your fee online or you may send your finished application with your payment by mail.
Filing date
Once the Registrar has received your application, it will be reviewed to ensure it is complete. If any information is missing, you will be contacted to obtain it. Once this is completed, the Registrar will acknowledge receipt of application and will you give you a filing date. This date is the date which you have met all the requirements and is important since it is the date used to assess who is entitled to registration in the case of co-pending trademarks. Although it is possible to make changes to your application after it has been submitted, not all changes will be permitted.
The examination process
After the Office receives your application and provides you a filing date, they will:
- Search the trademark data to find any registered or pending trademark that is confusing with your trademark (if found, you will be informed)
- Examine the application to make sure it does not contravene the Trademarks Act and Regulations, raise any objection to registering your trademark and inform you of any outstanding requirements
- Publish the application in the Trademarks Journal after which the public may file an opposition, or challenge, to your application
- Register your trademark if no one opposes to your application, or if an opposition has been decided in your favour
Abandonment
If you do not respond to an examiner’s report, the Registrar may consider your application abandoned. However, before this happens, the Office will notify you, giving you a chance to rectify the situation within a specific period of time. If you fail to respond during this time, you will need to file a new application and pay another fee.
Do I need a registered trademark agent?
Preparing and completing your trademark application can be a complex process. Whoever completes the application needs to have a good amount of knowledge about trademark law and how the registration process works. However, be caution of unregistered trademark agents. These individuals are not authorized to represent applicants and support them in completing trademark applications. A trademark agent will help you prepare a properly written application so that your trademark is adequately protected. This is extremely important if someone were to challenge your right to use the trademark. It is not mandatory to hire a trademark agent, however, it is highly recommended you do so. Once you have an agent, the Registrar Office will communicate with that person. If you choose to terminate your arrangement with a trademark agent, the Office will then speak with you directly.
