A Guide to Trade-marks: The Trade-mark Registration Process

• The preliminary search
• Application
• Foreign applicants
• Filing date
• Search and research
• Examination
• Disclaimers
• Abandonment
• Pre-publication search
• Advertisement
• Opposition
• Allowance and registration

The preliminary search

The Trade-marks Office
The Trade-marks Office maintains a public electronic inventory of all registered trade-marks and pending applications at its premises in Gatineau, Quebec. Before you apply for trade-mark registration, you or your agent should conduct a thorough search of the electronic register and the Trade-marks database to see if your trade-mark could be confused with someone else's. While not mandatory, it is a good idea for two reasons:

1. It is a form of pre-screening. It will help you determine whether your application has a chance for success, or whether it would be a waste of time and money to try to register it in its present form. For example, your search may turn up a registered trade-mark "Southpole" for frozen water products, hence you would have trouble registering "Northpole" for your ice cream. You might, at this stage, want to consider modifying your trade-mark to add or adopt more original words or artwork.
2. A search can help you avoid trade-mark infringement and potential lawsuits.

The search room in the Client Service Centre, in Gatineau, is open to the public, free of charge, from 8:30 a.m. to 4:30 p.m., Eastern Time, Monday through Friday, except on legal holidays, at:

Place du Portage I
50 Victoria Street
2nd Floor
Gatineau, Quebec  K1A 0C9

You may personally visit the Trade-marks Office, or you may consult one of the companies licensed to use the electronic database, or hire a freelance trade-mark searcher or a trade-mark agent to do the research job on your behalf. Freelance searchers and trade-mark agents are listed in your local telephone directory under "Searchers of Records" and "Trade-marks".

The Trade-marks Office electronic inventory contains listings of registered and pending applications. The electronic indices cover word marks, slogans, numbers, pictures and combinations of these. As soon as your application is received, it too becomes part of the public record and is subject to inspection by the public.

To conduct a proper search, you will have to check for various possible versions of the mark. In the case of a word mark, you should look for all conceivable spellings. For example, if your trade-mark is "Northpole" you search for "North," "Nord" and "Pole".

Also in the Office records are samples of crests, badges and official symbols that fall into the category "Prohibited Marks," under subsection 9(1) of the Trade-marks Act. These samples can help you verify that your trade-mark does not fall into a prohibited category.

You should allow at least half a day to conduct your search. An information officer in the Client Service Centre will be pleased to explain how to access the electronic register and to provide you with general information about the Trade-marks Act and Regulations. You may consult the Trade-marks database now. It is important to note that, the Trade-marks Office cannot conduct the search for you, or advise you on whether your mark is registrable. Registrability of the trade-mark will be determined in the examination process of the trade-mark application.

Trade names
Consider also having a search of trade names done before you go any further. Trade names are often also used as trade-marks, even if they are not registered as such. Southpole Inc. may never have filed for trade-mark registration, but if the name "Southpole" is known for frozen water products, the company could argue ownership of the word as a trade name, as well as a trade-mark. Southpole Inc. could not prevent you from filing your "Northpole" application. The Trade-marks Office would not have "Southpole" on its trade-mark records, because trade names are not registered with it.

However, Southpole Inc. could easily find out about your application, either by doing a search of the Trade-marks Office records or when your application is published in the Trade-marks Journal. It may then challenge your application during the stage called "Opposition."

As trade names may be recorded separately in each province under provincial legislation, there is no complete central inventory containing all current names, although through NUANS you can access a data-base of registered corporate names. This search is therefore quite complex and you are advised to hire a trade-mark agent to do the job for you.

Application

The principal document in the registration process is your application form. You must file a separate application for each trade-mark you wish to register, although one application may cover both wares and services or a number of wares or services.

You create the form yourself based on the sample formats supplied with this guide. There are a total of 9 different suggested formats, covering every kind of application (e.g. ordinary marks, certification marks, applications for amendment of a registration, etc.). For your convenience, the most commonly used formats, 1 and 4, annotated with instructions for filling them out, are included as Appendix B - Format of the Application.

Electronic copies of the suggested formats are available on our Web site in PDF (Portable Document Format). Suggested Forms Trade-mark applications may also be filed electronically. E-Services

• Format 1 is for applications for ordinary marks based on use in Canada. This means you have been using the mark for a certain length of time and your claim is based on this fact.
• Format 4 is for applications for ordinary marks based on proposed use in Canada. This means that you state your inten-tion to use the mark as described in your application. (You must demonstrate "use" before registration can occur.) You should consider waiting until the opposition period is over before commencing use of your mark.

If appropriate, you could combine the two formats. For example, if you've been offering a restaurant service under the name "Northpole" for several years and now you plan to also sell "Northpole" ice cream, your application would be based on both "use for the services" and "proposed use for the wares."

Whichever format you use, you must specify the trade-mark you are seeking to register. If your trade-mark is anything other than a word or words in upper or lower case letters then a drawing of the design is required at the time you file the application. The formal drawing should:

• be in black and white; and
• include a description of the colour(s) if colour is claimed by you in the trade-mark.

For detailed designs, a drawing as large as possible, but not exceeding 22 cm x 35 cm (8.5 inches x 14 inches), will allow for the clearest reproduction. If you wish, you may use the special chart in the Trade-marks Regulations (1996) to indicate your colours. But note that including colour gives you less flexibility, as you must then always use your trade-mark in those specified colours. If you simply present your design in black and white, you will be free to use the mark in any colour. Likewise, presenting your word mark in any style of lettering other than upper or lower case restricts you. If you wish maximum flexibility, present the word mark in upper or lower case and the design in black and white.

To sum up, a complete application includes:

1. the appropriate application form filled out by you or your agent;
2. the application fee; and
3. a formal drawing where appropriate.

Foreign applicants

If you are applying for registra-tion of a trade-mark in Canada, but reside in a country other than Canada, you must appoint a representative for service to whom the Office correspondence will be directed.

Filing date

When your application arrives at the Trade-marks Office, the Office staff check it to make sure it is complete. If anything is missing, they will contact you to ask for documents or information. Once this process is finished, the Office will acknowledge receipt of a completed application and assign a filing date, that is, the date that your application is officially filed. (Do not confuse this date with registration.) This filing date is particularly important for proposed use trade-mark applications, since it is the date the Trade-marks Act deems to be the entitlement date of your trade-mark application.

After the formal filing you may make minor modifications in your application. Major changes, however, would entail the trouble and expense of another filing. To avoid this, you or your agent must take great care in preparing your application.

Search and research

Trade-marks Office staff conduct a thorough search of the records to verify that your trade-mark cannot be mistaken for anyone else's. They also conduct research to determine whether your mark fulfils all the criteria of the Trade-marks Act, in other words, that it does not fall into any of the categories discussed in the section, "Making sure your trade-mark can be registered." The results are considered by the Trade-marks Examiner assigned to your case.

Examination

The Examiner studies the data and decides whether your application can be accepted. If there are doubts about your case, the Examiner will notify you of the objections. You then have opportunities to respond. If your answers still fail to satisfy the Examiner, you will receive a letter informing you that your application has been refused and explaining the reasons why. In the event of refusal, you have the right to appeal to the Federal Court of Canada.

Disclaimers

The Examiner may request that the applicant disclaim the right to the exclusive use, apart from the trade-mark, of a portion of the trade-mark if the appropriate disclaimer statement has not already been included in the application.

Abandonment

If you fail to prosecute your application (take all the steps necessary to complete the process), your application may be considered abandoned. Before this happens, you will be notified and given an opportunity to remedy the situation within a specified time period. If you do not respond appropriately, your application will be considered abandoned and you will have to re-apply with the requisite fee to pursue the trade-mark.

Pre-publication search

Let's suppose your application for the trade-mark "Northpole" has been approved for advertise-ment in the Trade-marks Journal. The Examiner could find no grounds to disqualify it. Does that mean registration is completed? No. There are still hurdles to overcome. The Office does another search, called Pre-publication Verification, to ensure that in the intervening months, no one has registered or applied for registration of a trade-mark that conflicts with yours. The Office will again correspond with you if necessary and seek your comments on any such trade-mark.

Advertisement

Suppose the Pre-publication Verification has not unearthed any new objections for "Northpole." Now your application is ready for advertisement in the Trade-marks Journal. This journal, published each Wednesday, contains details about every application which has been approved for advertisement. When an application is advertised, it allows members of the public an opportunity to raise objections to pending applications prior to registration. It is another means of weeding out trade-marks that conflict with those of other owners. The Journal entry for "Northpole" is a summary of the information on the trade-mark and includes your name, address, file number, filing date, the trade-mark (the word mark, symbols, etc.), whether it is based on "use" or "proposed use," which goods and services it is used for and any other claims (colour claims, disclaimers, etc.).

Opposition

Any person with valid grounds for doing so may oppose a trade-mark application advertised in the Trade-marks Journal. An opposition must be made within two months of the publication date by either filing a statement of opposition together with a fee of $250 (effective January 1, 2004 - $750), or by requesting an extension of time to oppose, with a fee of $50 (effective January 1, 2004 - $125). The Trade-marks Office will dismiss an opposition it considers to be frivolous.

If your application is opposed and you don't already have an agent, you are urged to hire one at this point. The same holds true if you wish to oppose someone else's application. Opposition is a complex adversarial process, much like a court proceeding, during which both parties may file evidence and counter-arguments, cross-examine the evidence of the other party and make representations at an oral hearing. The whole procedure can take as long as two to four years, sometimes longer. After a final decision is rendered, it may be appealed to the Federal Court of Canada. Because opposition proceedings can absorb so much time and money, you are advised to choose your trade-mark agent carefully. Seek someone who has a proven expertise in the field.

Allowance and registration

If there is no opposition, or if an opposition has been decided in your favour, your application will be allowed. The Trade-marks Office will not consider any further challenges. You will receive a Notice of Allowance and be asked to pay the $200 registration fee. If your application has been based on "proposed use," you will be asked for a declaration stating you have commenced use of the trade-mark. The final step, after you have fulfilled these require-ments, is for the Office to issue a Certificate of Registration and enter the registration on its records.

A Guide to Trade-marks
| Table of Contents | Introduction | Making sure your Trade-mark can be Registered | The Trade-mark Registration Process | Other Procedures | For More Information | Fees | Appendix A - Twenty Common Questions About Trade-marks | Appendix B - Format of the Application | Appendix C - Your Trade-mark Application | Glossary |