What is a trademark?
Is registration of a trademark necessary?
Why should I register my trademark?
Do I have to re-register my trademark?
What are the costs of trademark registration?
If I get a registered trademark in Canada, does it cover the United States as well?
What is a registered trademark agent?
Where can I get more information?
Can I use an English trademark in Quebec?
How do I Advise the Trademarks Office of a Change in Address?

 

What is a trademark?

A trademark is a mark that has been adopted to distinguish the source of a particular good and/or service from other sources in a similar trade. Most trademarks are wordmarks, such as Kodak or Coke, design marks, such as Nike’s “swoosh”, or a combination, such as the stylized script for Coca Cola. Amongst other important qualities, a trademark must be both used in trade and distinctive, but it can be neither clearly descriptive nor deceptively indescriptive.

Is registration of a trademark necessary?

You do not have to register a trademark in order to have valid trademark rights. As soon as you have begun to properly use a valid trademark, then you have established it as a trademark. This is often called a common-law trademark (as opposed to a registered trademark). A legal action for trademark infringement based on these unregistered rights is possible, but it is very difficult and expensive.

Why should I register my trademark?

Registering your trademark has many important advantages:

• It reserves the right of exclusive use across Canada.
• It helps protect your trademark by preventing others from adopting a confusingly similar trademark, since your mark is on public record.
• The Trademarks Office should refuse other applications for registration of confusingly similar marks.
• Registration is required in order to have access to the action of “infringement” under the Trademark Act. This is much easier to sue under than the common-law action of passing-off.
• You do not have to prove the good reputation of the mark (goodwill).
• Challenges to the validity of your trademark are more limited than with unregistered trademarks.
• Licensing of the use of the trademark is easier.

Do I have to re-register my trademark?

Every 15 years, the Canadian Intellectual Property Office (CIPO) will contact you and/or your agent to renew the registration. Present government fees are $350 for a renewal.

What are the costs of trademark registration?

The government charges $250 for the application, and another $200 for the registration, for a total of $450 in government fees. This is the minimum cost. In addition, there may be costs for trademark searches and professional fees.

It is foolish to apply for a trademark registration without doing at least some searches. You can conduct a search yourself of the CIPO registry, which is available on-line. However, most applicants order more comprehensive searches, the costs of which vary. For more information, see our section on Trademark Searches.

It is also possible for you for apply for and process the trademark application on your own behalf. This is the least expensive route, but because of the complexity of the underlying law, it is not recommended. The fees charged by Registered Trademark Agents vary considerably. If you are doing research on this subject, one particular caution is to make sure you are comparing ‘apples to apples.’ The types and comprehensiveness of services are often quite different.

Our normal fee for the search and application phase is $775. Click here for more details about our trademark package.

Once an application is made, it will be about 12 months before CIPO provides you with a substantive reply. To finish off the registration process, including responding to office actions, our fees in a typical case are about $400-$500.

If I get a registered trademark in Canada, does it cover the United States as well?

No. Trademark protection ends at the border. If you want trademark protection in the U.S., you have to apply for a separate trademark in the U.S.

Your use and/or registration of a trademark in Canada does not give you any trademark rights outside Canada. If the same trademark or a similar one is registered in the U.S., then you will not be able to use your mark in the U.S. Therefore, if you are using or may be using your trademark in the U.S., then you should consider registering in the U.S. Also, because of international agreements, an applicant for a U.S. trademark has six months after their U.S. application date to apply for a Canadian trademark and have their application ‘backdated’ to the date of the U.S. application. This means that although our search of the Canadian trademark database may not disclose any problem, a later application from the U.S. could actually have priority over yours. A U.S. registry search can help uncover this type of potential problem. Finally, a U.S. trademark holder can acquire rights if the trademark has either been ‘used’ or ‘made known’ in Canada. Knowing of a U.S. registration can alert you to this potential problem. We offer a search of the USPTO Trademark Registry and our opinion about registrability for $300 + taxes.

What is a registered trademark agent?

The Canadian Intellectual Property Office (CIPO) will not deal with anyone other than the applicant unless that person is a registered trademark agent. Registered trademark agents must have worked with trademarks for at least two years, and if not lawyers, they must pass a special examination.

Where can I get more information?

An excellent source for further information is the Canadian Intellectual Property Office (CIPO). In addition, if you have any questions, do not hesitate to contact us.

Can I use an English trademark in Quebec?

The Quebec Charter of the French Language contains provisions that are intended to protect the French language within Quebec. The regulations under the Charter provide a specific exemption for “a recognized trade-mark within the meaning of the Trade-marks Act … unless a French version has been registered. “ Thus, a trademark registered with CIPO is exempt from the Charter. It is not clear whether an unregistered trademark would also be covered. Your safest course of action is to register the trademark if you intend to use it in English in Quebec.

How do I advise the Trademarks Office of our change in address?

For Canada, you can fax the trademark office at 819-953-2476. Give them the name and registration # of the trademark, and the owner. There is no government charge. For the U.S., you can go to the USPTO site and look for the Change of Owner’s Address Form. The government charges $40 USD per mark, and you can do it online.