Area of Law: Intellectual Property
Answer # 308
Trademark applicationsRegion: Ontario Answer # 308
Applying for a trademark is not only a lengthy process but it is also very complicated. It usually takes between one to two years to register a trademark. If you decide to apply for a trademark, you should contact a registered trademark agent for assistance.
There are five main steps you must follow to apply for a trademark:
- Determining what type and format of application you need to submit.
- Creating the appropriate content of the application.
- Submitting drawings if they are required.
- Select the class which the good or service to be trademarked falls within.
- Paying the application fee.
Determine what form of application to submit
For each trademark that you wish to register, you must file a separate application, although one application may cover both goods and services, or a number of goods or services. Different applications are required depending on whether your application is for a mark that you now use, that you propose to use, whether it is a word, and other variations. The two basic kinds of trademarks are:
- Ordinary marks, which are words, sounds, symbols (designs), sounds, pictures, moving images, tastes, smells, textures, distinctive colours, holograms, a three-dimensional shape, a mode of packaging, or a combination of these, that are used to distinguish the product or service of one business from the products and services of other businesses.
- Certification marks, which identify goods or services that meet a standard set by a governing organization.
Distinguishing guises no longer a classification
The new Trademarks Act, in force as of June 14, 2019 no longer includes a definition of “distinguishing guise” trademarks, which generally referred to the shape of goods, and packaging. A trademark of this nature must be registered as either (a) a three-dimensional shape, or (b) a mode of packaging goods – two marks which are included in the Canadian Intellectual Property Office (CIPO) list of ordinary marks.
Create and fill out the forms
Creating the proper application is a very complex process because the application must be prepared with your specific mark and use requirements in mind. It is important to make sure that your application is correct because it is often not permissible to make changes after you have filed the application. Depending on the changes you make, you may have to file another application and pay the application fee again. The words chosen to describe the mark and the degree of protection sought will impact if the application will be successful and how much protection is ultimately given.
Submit drawings if they are required
If your trademark is anything other than a word or words, then you must submit a drawing of the trademark. The drawings must be a specific size and quality, be in black and white, and include a description of the colour(s) if colour is claimed as a feature of your trademark.
Decide what class trademark falls in
Under the new Trademarks Act, Canada is a member country of the Nice Agreement. The Agreement establishes the International Classification of Goods and Services. In addition to describing the good or service, and submitting drawings, the applicant must also select the class which the good or service to be trademarked falls within before they can be registered.
Pay the application fee
Finally, when you submit an application to register a trademark, you must pay the prescribed filing fee. Your application may be filed online with the Canadian Intellectual Property Office, or, you may send your completed application with payment by mail to the Office of the Registrar of Trademarks at the Canadian Intellectual Property Office.
Trademarks Act – international trademark agreements
Under the new Act, Canada has agreed to join the following international trademark agreements:
- Singapore Treaty – relating to the Law of Trademarks,
- Madrid Protocol – relating to the Madrid Agreement concerning the International Registration of Marks, and
- Nice Agreement – establishes the International Classification of Goods and Services.
The Madrid Protocol allow Canadian applicants to apply for International Registration (IR) with any of the current 104 members covering 120 countries with a single application. Conversely, foreign applicants will be able to designate Canada in their Madrid filing. This IR can reduce the cost and time of submitting separate applications where the applicant wishes to register in multiple foreign jurisdictions.
For more information about the trademark application process and current government fees, refer to the Canadian Intellectual Property Office.
For legal assistance with your trademark application, or other intellectual property matters, contact our preferred lawyers and see who’s right for you:
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