Pre-Trademark Filing FAQ for Canadian Trademark Applications
Here are our answers to some commonly asked questions about Canadian trademarks before filing.
1. What information do I need to file a trademark?
To file a trademark in Canada, you will generally need the following information:
The exact mark you want to register – this can be a word mark or a design mark
The legal name and address of the owner
A list of goods and services associated with the mark
2. Should I file a design mark or a word mark?
A word mark protects the word(s) themselves, regardless of the way they are displayed. A design mark, sometimes known as a logo, protects the stylized appearance of the word or a graphic symbol. A design mark can also be a combination of a word plus a separate graphic symbol. Non-roman or Asian character trademarks also need to be filed as design marks.
Deciding between the two often depends on how you plan to use the mark. If the visual appearance is crucial to your brand, you might consider a design mark. If you want broader protection that covers the word(s) in any format, a word mark is generally more appropriate.
3. What are trademark classes and how do they affect fees?
Trademark classes categorize the goods and services that a mark will cover. Canada uses the Nice Classification system, which has 45 classes. Fees are assessed on a per-class basis. The more classes you file under, the higher your application fee will be. Also, the more classes that a trademark covers, the greater the potential for conflict with other trademarks.
Please note that trademark applications generally cannot claim entire classes – you will need to list each of the products or services that you provide, which will then be classified to determine the total fees.
4. How can a trademark agent help with the process?
A trademark agent can provide advice on a range of issues, including ownership, NICE classification, the likelihood of successful registration, potential conflicts, and how to respond to examiner objections. They will also prepare and file the full trademark application for you, and represent you in communications with the Canadian Intellectual Property Office (CIPO).
5. How long does the process take?
The process can be broken down into two main parts:
Preparation Time: Depending on the complexity, it may take a one to a few days to prepare the application.
Examination Time: After filing, CIPO typically takes around 24 months to examine an application. Registration can take longer if issues arise during examination.
6. Do I need to use a trademark first before filing a trademark application?
In Canada, you do not need to use a trademark before filing a trademark application. However, you should be prepared to use the trademark at least within three years after registration, or your trademark may be expunged for non-use.
7. Do I need a registered trademark before I start using the trademark?
No, you do not need to register a trademark to start using it. However, it is recommended that you obtain at least a trademark search to ensure that your usage does not conflict with an existing trademark.
8. What are the main benefits of owning a trademark?
Owning a registered trademark gives you exclusive rights to the mark in Canada, makes it easier to protect your mark from infringement, and enhances your brand's reputation. A trademark may also be required to access brand protection tools such as those found on the Amazon platform or to take down infringing ads on Google.
9. Is a trademark different from registering a business name?
Yes, a registered business name and a registered trademark serve different legal functions. A business name identifies your business for communicating with the government or the public, but doesn't give you exclusive rights to use that name as a trademark across Canada. For exclusive rights, a trademark registration is needed.