Trade-marks

To Whom Does This Apply?

Businesses of all sizes and others involved in the marketplace with wares or services should consider registering their trade-mark(s). Current applicants and/or agents may need to file a new application, send correspondence or renew their trade-mark.

Summary

What is a Trade-mark?

A trade-mark is a word, a symbol, a design (or a combination of these features) used to distinguish the wares or services of one person or organization from those of others in the marketplace. Trade-marks come to represent not only actual wares and services, but the reputation of the business. As such, they are considered valuable intellectual property (IP). A registered trade-mark can be protected through legal proceedings from misuse and imitation.

Trade-marks can be registered with Canadian Intellectual Property Office (CIPO). No one is required to register a trade-mark unless it is used to mark precious metals. Anyone using a mark for a certain length of time can establish their ownership through Common Law, however registration is highly recommended.

Basic categories of trade-marks:

• Ordinary marks are words or symbols (or a combination of these features), that distinguish the wares or services of a specific firm or individual. Suppose you opened a courier business which you called "Giddy-up." You could register the words as a trade-mark (assuming all legal requirements were met) for the service you offer.
• Certification marks identify wares or services which meet a defined standard. They are owned by one person but licensed to others to identify wares or services which meet a defined standard. Examples are: the Woolmark design owned by Woolmark Americas, Ltd., for use on clothing and other wares and the logo of the Association of Professional Engineers.
• Distinguishing guise identifies the shaping of wares or their containers, or is a mode of wrapping or packaging wares. If you manufactured candy moulded to look like butterflies, you might want to register the butterfly shape as a trade-mark under "distinguishing guise."

Trade-mark vs trade name

A trade name is the name under which you conduct your business, whether it be your own name, or the name of a corporation or a partnership or a name adopted for a segment of that business, i.e., a division of a company. The trade name can be registered under the Trade-marks Act only if it is also used as a trade-mark, that is, used to identify wares or services.

For instance, let's say you own an ice cream business and your company is called A.B.C. Ltd. People know your ice cream under the name A.B.C., because you use it as a trade-mark on or in association with your ice cream. You can, therefore, register A.B.C. as a trade-mark. The What's in a Name pamphlet covers this topic.

In certain circumstances, a trade-mark registration may be declared invalid because of the prior use in Canada of a trade name that is similar to the registered mark. Ideally, a search of existing trade names should be conducted before filing a trade-mark application.  

Trade-mark Protection

A trade-mark registration is valid throughout Canada for 15 years and is renewable every 15 years thereafter. Those selling wares or services in other countries should consider registration in each of those countries. Contact a trade-mark agent or the IP Office of that country.

• Trade-mark Agents List
• International Intellectual Property Offices  

Non use

If the owner does not use a trade-mark for an extended period, the registration may be cancelled under section 45 of the Trade-marks Act .

Not registrable

In general, marks that may not be registered are names of individuals, words that are clearly descriptive (e.g. "delicious" ice cream), terms that are deceptively misdescriptive, words that designate a place of origin (e.g. "Atlantic" cod), terms or symbols that are too similar to an existing trade-mark, and terms and symbols that are expressly prohibited under the Trade-marks Act. The latter include symbols (coats of arms, badges, crests, etc.) of national and international organizations and terms that are considered immoral or offensive.

Why file?

Registration is direct (prima facie) evidence of ownership of a trade-mark that gives the owner the exclusive right to use the mark. A registered trade-mark is also a valuable asset for business expansion through licensing franchises and is a big part of attracting and retaining customers.

Use of an unregistered trade-mark can lead to a lengthy, expensive legal dispute over who has the right to use it. In a dispute, the registered owner does not have to prove ownership; the onus is on the challenger.

Benefit to Canadians

Canadians are surrounded by trade-marks used by businesses as branding for wares and services in Canada. Canadians are able to verify the registration and ownership of these trade-marks, providing them with information to make informed business decisions such as when purchasing a franchise or products.

Getting Started

First identify the intellectual property (IP) that should be protected and make sure it can be protected under the Trade-marks Act. The publication Stand out from your competitors provides a valuable introduction to IP and is a great starting point. The Guide to Trade-marks provides more general information and an introduction to trade-mark practices and procedures.

• Stand out from your competitors  
• Guide to Trade-marks
• Trade-marks Act Department of Justice Web page 

Agents

A trade-mark application is a complex document and must be worded correctly to be of value. Registered trade-mark agents can help entrepreneurs with the many complexities of trade-mark law. They must pass rigorous examinations in trade-mark law and practice before they may represent applicants. CIPO recommends the use of an agent and maintains an on-line list of registered trade-mark agents.

Trade-mark Agents List

False Invoices

Make sure you know who you are dealing with before paying an invoice you were not expecting.

False Invoice Notice

Preliminary search

Do a preliminary search of the Canadian Trade-marks Database to see if similar trade-marks exist. This will help in deciding if filing for trade-mark protection makes sense.

In addition A NUANS (Newly Upgraded Automated Name Search) is a computerized search system that compares a proposed corporate name or trade-mark with databases of existing corporate bodies and trade-marks. This comparison determines the similarity that exists between the proposed name or mark and existing names in the database, and produces a listing of names that are found to be most similar. You may order your NUANS name search report from a NUANS Registered Search House.

A trade-mark agent or professional searcher can be hired to perform a more in-depth search. 

• Canadian Trade-marks Database
• Obtain a NUANS report

Filing an application

Preparing a trade-mark application and following through on it can be a complex task. CIPO recommends the use of a registered trade-mark agent and maintains an online list of agents.

In most instances, the trade-mark must be used in Canada before it can be registered. An application may be based on "proposed use," but the trade-mark must be put into use before registration can occur.
 
Applications may be filed online, by mail or by fax. There are online and printable forms on the site.

• Registered Trade-mark Agents List 
• Online and Printable forms

Process and related fees

There are several steps in the process and these are detailed on the CIPO Web site with approximate turnaround times and associated fees.

Application Process  

Fees

The Tariff of Fees was last amended January 1, 2004 with reduced fees for filing on-line. Refer to the Application Process document for the basic fees associated with an application.

• Tariff of Fees
• Application Process
• Trade-mark Regulations (1996) Department of Justice Web page

Assistance Available 

• CIPO Client Service Centre
• Canadian Intellectual Property Office Web site

Online Forms

File new and amended applications or renew the trade-mark and pay by credit card online. For individuals there is a log-in process through Strategis. For agents there is a second log in process through CIPO. Also there are system and browser requirements to be met including 128 bit encryption. For more information see our registration page.

Order copies of trade-mark documents online, pay when the order is ready. 

• Online and Printable forms
• Order Trade-mark Documents
• Registration page  

Mail and Facsimile Correspondence

Licences and assignments must be sent by mail or fax as original signatures are required.
 
Address to: Registrar of Trade-marks, Canadian Intellectual Property Office, Place du Portage I, 50 Victoria Street, Gatineau, Quebec K1A OC9; or to a designated Industry Canada Regional Office; or via a designated courier service; or by fax to (819) 953-CIPO (953-2476) or (819) 953-OPIC (953-6742).

The date of receipt depends on where/how it was delivered and whether the office is open for business on that day.

Correspondence Procedures 
 
Publications

The Trade-marks Journal is the official publication in which proposed marks are published every Wednesday. Notices, Examination/Wares and Services Manuals and other publications are available on the CIPO Web site.

• Trade-marks Journal  
• Trade-mark Notices
• Trade-marks Wares and Services Manual
• Publications  
  

DISCLAIMER
Information contained in this section is of a general nature only and is not intended to constitute advice for any specific fact situation. For particular questions, the users are invited to contact their lawyer. For additional information, see contact(s) listed below.

Alberta Contact(s):
Industry Canada
Suite 725
9700 Jasper Avenue
Edmonton, Alberta  T5J 4C3
Telephone: (780) 495-4782
Fax: (780) 495-4507
Toll-free (information): 1-800-461-2646

British Columbia Contact(s):
Industry Canada
Suite 2000
300 West Georgia Street
Vancouver, British Columbia  V6B 6E1
Telephone: (604) 666-5000
Fax: (819) 953-7620

Manitoba Contact(s):
Canada/Manitoba Business Service Centre
250 - 240 Graham Ave
P.O. Box 2609
Winnipeg, Manitoba  R3C 4B3
Canada
Telephone: 204-984-2272
Fax: 204-983-3852
Toll-free (information): 1-800-665-2019
TTY Toll-free (hearing impaired): 1-800-457-8466
TTY (hearing impaired): 1-800-457-8466
E-mail: manitoba@cbsc.ic.gc.ca
Web site: http://www.cbsc.org/manitoba
Hours of operation: 8:00 a.m. to 5:00 p.m. Monday to Friday

New Brunswick Contact(s):
Mr. Tom Boyd
Business Development Officer
Canadian Intellectual Property Office
1575 Brunswick Street
Halifax, Nova Scotia  B3J 2G1
Telephone: (902) 426-6476
Fax: (902) 426-6530
Toll-free (information): 1-800-668-1010
E-mail: boyd.tom@cbsc.ic.gc.ca
Web site: http://cipo.gc.ca

Newfoundland & Labrador Contact(s):
Mr. Tom Boyd
Business Development Officer
Canadian Intellectual Property Office
1575 Brunswick Street
Halifax, Nova Scotia  B3J 2G1
Telephone: (902) 426-6476
Fax: (902) 426-6530
Toll-free (information): 1-800-668-1010
E-mail: boyd.tom@cbsc.ic.gc.ca
Web site: http://cipo.gc.ca

Nova Scotia Contact(s):
Mr. Tom Boyd
Business Development Officer
Canadian Intellectual Property Office
1575 Brunswick Street
Halifax, Nova Scotia  B3J 2G1
Telephone: (902) 426-6476
Fax: (902) 426-6530
Toll-free (information): 1-800-668-1010
E-mail: boyd.tom@cbsc.ic.gc.ca
Web site: http://cipo.gc.ca

Ontario Contact(s):
Industry Canada
4th Floor
151 Yonge Street
Toronto, Ontario  M5C 2W7
Telephone: (416) 973-5000
Fax: (416) 936-0334

Prince Edward Island Contact(s):
Mr. Tom Boyd
Business Development Officer
Canadian Intellectual Property Office
1575 Brunswick Street
Halifax, Nova Scotia  B3J 2G1
Telephone: (902) 426-6476
Fax: (902) 426-6530
Toll-free (information): 1-800-668-1010
E-mail: boyd.tom@cbsc.ic.gc.ca
Web site: http://cipo.gc.ca

Quebec Contact(s):
Industry Canada
Suite 700
5 Place Ville-Marie
Montréal, Quebec  H3B 2G2
Telephone: (514) 496-1797
Fax: (514) 283-3096

Northwest Territories, Nunavut, Saskatchewan, Yukon Contact(s):
See National Contact.