Trademark Registration

Common-law Trademarks

It is not necessary to register in order to have valid trademark rights. Such rights derive from the old English Common Law, are hence the mark is often called a common-law or unregistered trademark. As soon as a valid trademark has been properly used, these common-law trademark rights arise, but they are very weak rights. If a common-law trademark is infringed, then you can sue in the Courts, but you have only weak rights. For example, you must prove that there is “good will” associated with your mark. Also, these rights only extend to the locale where you have this reputation, and not anywhere else.

Registered Trademarks

Many people and businesses complained to the government about how difficult and expensive it was to protect their trademarks. As a result, Parliament enacted a Trade-marks Act. This Act set up a register of trademarks, where one can apply. If the necessary requirements were met, such as not being confusing with another mark, not too descriptive, etc., the mark will likely be put on the register. This entitles the owner to additional rights. In addition, everyone is expected to know about any mark that is on the register. Thus, even if someone uses the mark without knowing about your registered trademark, they are considered to be infringing.

Overview of Registration Process

The normal trademark registration process takes 14-18 months. You can still use your trademark before registration, and in fact it’s usually to your benefit to. The normal trademark registration stages are:

  • Stage 1: Awaiting First Response From CIPO – After CIPO receives your application, it takes them about 8-12 months to do a review and get back to you with any objections.
  • Stage 2: Examiner’s Report – If there are objections they usually involve descriptions of the wares and services, confusion with existing marks on the registry or descriptiveness. In our experience, CIPO raises an objection about 50% of the time. Our success rate in overcoming objections is over 95%. If there is an objection, it can take from 1-12 months to resolve.
  • Stage 3: Publication and Opposition – Your mark is then published in the weekly Trademark Journal, which lists all the trademarks CIPO believes qualify for registration. The public then has 2 months to object. This rarely happens. If someone does object, they must file a Statement of Opposition, which begins the Opposition Process. Even if there is no Opposition, this stage still takes about 6 months. If there is, it can take years to resolve.
  • Stage 4: Registration – You’ll get a Notice of Allowance from CIPO saying they’re ready to register your trademark once you’ve filed the final papers and paid them the necessary fee. This can be done in as little as 1 month.

 

Next: Advantages of Registration