When you hear the word “trademark” what probably pops into your mind is some company’s logo. Logos are an example of the “ordinary marks” kind of trademark. You can trademark words, symbols or combinations of the two that make your company’s wares and/or services distinctive.
You can also trademark a particular way of packaging or shaping your company’s wares as a “distinguishing guise”. For instance, a company that sold bath oil in a distinctive swan shaped package might trademark the container. The last category of trademarks is “certification marks”, which identify wares or services that meet a defined standard. Think of the Woolmark design, for example.
Is Trademark Registration Necessary?
Trademark registration isn’t strictly necessary. Using a trademark for a certain period of time establishes your ownership of the trademark through common law and gives you certain trademark rights. However, these rights are quite limited compared to the rights of a registered trademark owner. If your trademark is not registered, your trademark rights are limited to the geographic area where the trademark has been used, and you will have to prove ownership of your trademark to the court.
On the other hand, once you've registered your trademark, you will have the exclusive right to use the trademark across Canada for 15 years (renewable for 15 years at a time) and will have the right to initiate infringement proceedings in either the provincial or federal courts (which owners of unregistered trademarks can’t do).
Trademark registration is, of course, prima facie evidence of your ownership of the trademark, so if there ever is a dispute about your trademark, the burden of proof is on the challenger. And Canadian trademark registration can be used to claim priority in registering the trademark in foreign countries.
Because the essential purpose of trademarks is to establish a company’s reputation with the buying public, and that reputation may need to be defended sometime, it seems rather pointless to have an unregistered trademark.
The Trademark Registration Procedure
The first step in trademark registration is to file an application with the Trade-marks Office. You can file a Trademark Application online through the CIPO (Canadian Intellectual Property Office’s) website. There are separate separate trademark application forms for agents as well as printable forms if you prefer to fill out the application and send it in.
Be aware that while you may file a trademark application based on “use or making-known in Canada, foreign use and application/registration, proposed use in Canada, or any combination thereof”, in most instances your trade-mark must be used in Canada before it can be registered (CIPO).
The basic cost of trademark registration is $250 (if submitted on-line) or $300 if submitted in any other way for each trade-mark applied for, which is a non-refundable filing fee. If your trademark application is successful, you will also have to pay $200 for a certificate of registration. These are the basic federal government fees and do not take into account the fees of a trademark agent.
Trademark Registration Tip: Search First!
Because the trademark application fee is non-refundable, it makes sense to use CIPO’s online Canadian Trademarks Database yourself first to see if there are other similar trademarks that might conflict with the one you want to register.
Continue on to the next page for more of the trademark application procedure.
