Post-Trademark Filing FAQ for Canadian Trademark Applications
Here are our answers to some commonly asked questions about the post-filing process.
1. What Happens After I File My Trademark Application in Canada?
After filing, your application will be assigned an application number and filing date, and will undergo an initial assessment by the Canadian Intellectual Property Office (CIPO) to ensure it meets basic filing requirements. It will then be placed in queue for examination by a CIPO examiner.
2. How Long Does the Examination Process Take?
For 2023-2024, CIPO has advised that the examination process can take 18-24 months, depending on the complexity of your application and the current workload at CIPO. If you require urgent examination of your trademark application (e.g., your trademark is being infringed or hijacked online), we can request expedited examination of your trademark application.
3. It has been more than 24 months! What is happening to my application?
Some applications are flagged by CIPO for using non-approved terms in their list of goods and services. This can happen if custom terms are used (for specific products or services), or because CIPO has changed its list of pre-approved terms over time. This places the application in a slower queue for examination (4 years or longer). If this happens, there are various options to place the application back into the standard examination queue, and we can discuss the options for achieving this.
4. What is an Office Action?
An Office Action is a letter from CIPO that raises issues or questions about your application. You will have a set period to respond to each Office Action, typically six months. We will report these to you, along with our recommendations and estimate of fees to prepare the response.
5. Can I Make Amendments to My Application After Filing?
Yes, you can amend certain elements of your application, like changing your address and narrowing the list of goods and services. However, more significant changes, like altering the trademark or expanding the list of goods and services, are generally not allowed.
6. What is a Trademark Opposition?
After the examination and approval of your application, it will be published in the Trade-marks Journal for opposition. During this period, anyone may oppose your application for various reasons, like similarity to an existing trademark or trade name. The opposition period in Canada is two months from the date of publication in the Trade-marks Journal.
7. When Will My Trademark Be Registered?
If no oppositions are filed, or if you successfully overcome an opposition, your trademark will proceed to registration usually one month after the end of the opposition period. You'll then receive a certificate of registration from CIPO.
8. Do I Need to Use My Trademark to Keep it Registered?
Yes, in Canada, a registered trademark must be used within three years from the date of registration, or it may be subject to cancellation for non-use. It is best to keep an annual record of your trademark usage (e.g., invoices showing dates, photos, sales records, web printouts) to defend against potential cancellation proceedings.
9. When Do I Have to Renew My Trademark?
In Canada, a trademark registration is valid for 10 years and can be renewed every 10 years thereafter. Failure to renew will result in the cancellation of the trademark registration. For trademarks managed by us, we will remind you prior to the renewal date and can facilitate the renewal fee payment on your behalf.
10. Can I Sell or Transfer My Trademark?
Yes, trademarks can be sold, licensed, or otherwise transferred, both during the application process or after registration. However, to complete the transfer, you'll need to record the change with CIPO. We can assist by preparing a transfer agreement and making the necessary request with CIPO.