Area of Law: Intellectual Property
Answer # 309
What happens in the Trademark registration process?Region: Ontario Answer # 309
Applying to register a trademark is a complicated process. For legal advice and assistance, you should contact a trademark lawyer. The following is an overview of the process. There are six main steps in the application process and it will usually take one to two years to register a trademark. The six steps are:
- Filing the Application
- Pre-publication Search
- Publication / Advertisement
- Allowance and Final Registration
1. Filing the application
First, your application must be filed with the Office of the Registrar of Trademarks at the Canadian Intellectual Property Office. When the application is received by the Registrar of Trademarks, they will check it to make sure it is complete. If it is not, they will notify your trademark agent to ask for any missing information.
If the application is complete, and you have included the correct fee, the Registrar will open a file and issue a filing date and an application number. Your trademark agent should keep a record of this number and refer to it in all correspondence with the Registrar. Your trademark agent should receive the filing receipt within two or three weeks. In addition, the Registrar will enter your application as pending in the Canadian Trademarks Database as well as other databases maintained by external companies.
When the application is complete, an examiner will conduct a search to make sure that your proposed trademark will not be confused with anyone else’s trademark and that your mark can be registered according to the Trademarks Act and Trademarks Regulations. If the examiner finds a problem with an application, the Registrar of Trademarks will contact your trademark agent and he or she will have a chance to respond to the problems. The examiner may request a disclaimer at this point. A disclaimer is a statement that a certain part of your trademark is not exclusively yours. It is still possible to use the disclaimed part of your mark, but you will have no rights to it.
If there is a problem with your trademark application and if your response to the problem does not satisfy the examiner, the application will be refused. Your lawyer can appeal this decision to the Federal Court of Canada. If you fail to respond to the Registrar of Trademarks by the required date, it will become abandoned.
3. Pre-publication search
Before advertisement in the Trademarks Journal can take place, the Registrar of Trademarks will conduct a second search to ensure that, again, no one has registered, or applied for registration of, a trademark that would be in conflict with the one you are seeking to register.
4. Publication / Advertisement
If the pre-publication search does not show any new objections to your application, your trademark application will be advertised in the Trademarks Journal. The Trademarks Journal is the official publication which lists every application that has been approved for advertisement in Canada.
There will be a two month period during which other people can oppose your application advertised in the Journal.
If someone does oppose your application, your lawyer or trademark agent will be notified by mail. In an opposition, the Trademarks Opposition Board (TMOB) will conduct oral hearings and hear evidence before making a decision. During these proceedings, both parties may present evidence to support their case. An investigator may be hired to gather this evidence.
6. Allowance and final registration
If there is no opposition to the application or if the opposition is unsuccessful, your application will be allowed and you will be sent a Notice of Allowance.
If there is no opposition to the application or if the opposition is unsuccessful, your application will be allowed. The Registrar of Trademarks will send your lawyer or trademark agent a Certificate of Registration which shows proof of registration of your trademark in Canada.
Trademarks Act – elimination of prior use requirement
On June 19, 2019, the new Trademarks Act came into force. Prior to this date, a “prior use” requirement existed before a trademark could be registered. Under the new Act, applicants for a trademark no longer have to use a trademark in order to have it registered, and the date of first use, or date of proposed first use, will not be recorded.
For more information about the trademark application process and current government fees, refer to the Canadian Intellectual Property Office.
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