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 four 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.
- 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 three basic kinds of trademarks are:
- Ordinary marks, which are words, sounds, symbols (designs) or pictures that distinguish the goods or services of a specific business.
- Certification marks, which identify goods or services that meet a standard set by a governing organization.
- Distinguishing guise, which identifies the shaping of goods or their containers, or the way in which the goods are wrapped or packaged.
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.
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.
New Trademarks Act
On June 19, 2014, the new Trademarks Act received Royal Assent. It is anticipated that the new Act will be proclaimed into force in 2019. Specifically, 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 will allow Canadian applicants to apply for International Registration (IR) with any of the 92 countries that are currently members. 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.
The Nice Agreement establishes the International Classification of Goods and Services. Therefore, in addition to describing the good or service, and submitting drawings, the applicant will have to select the class which the good or service to be trademarked falls within.
For more information about the trademark application process and current government fees, refer to the Canadian Intellectual Property Office.
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