A guide to trademarks

This guide explores what trademarks are, how they can benefit you and your organization, and why registration is important.

Important notice

This electronic version of the guide is the official version. If there are inconsistencies between this guide and the applicable legislation, the legislation must be followed. Read our terms and conditions.

On this page:

Glossary


Understanding trademarks—The basics

To succeed in the business world, you need to send the right message and develop the right image. If people cannot pick your products or services out from the crowd, they might work with another person or company that is easier for them to notice.

In fact, some brand names that got famous in the 1920s for being reliable and high quality are still leaders today. That is because the public likes what it knows and trusts. Companies spend millions of dollars taking care of their corporate image.

A registered trademark is one way to protect your corporate image. Registering your trademark gives you legal title to it the way a deed gives you title to a piece of real estate.

What are trademarks?

Trademarks can be one or many words, sounds or designs used to distinguish the goods or services of one person or organization from those of others.

Over time, trademarks come to stand for not only the actual goods or services a person or company makes, but also the reputation of the producer. Trademarks are very valuable intellectual property.

There are three types of trademarks:

  • An ordinary mark is made up of words, sounds, designs or a combination of these used to distinguish the goods or services of one person or organization from those of others. For example, suppose you started a courier business that you chose to call Giddy-up. You could register these words as a trademark (if you met all the legal requirements) for the service that you offer.
  • A certification mark can be licensed to many people or companies for the purpose of showing that certain goods or services meet a defined standard. For example, the Woolmark design, owned by Woolmark Americas Ltd., is used on clothing and other goods.
  • A distinguishing guise is about the shape of goods or their containers, or a way of wrapping or packaging goods that shows they have been made by a specific individual or firm. For example, if you manufactured butterfly-shaped candy you could register the butterfly shape as a distinguishing guise.

People occasionally confuse trademarks with patents, copyrights, industrial designs and integrated circuit topographies. Like trademarks, these others are rights granted for intellectual creativity and are forms of IP. However, there are important differences:

  • Trademarks may be one or a combination of words, sounds or designs used to distinguish the goods or services of one person or organization from those of others.
  • Patents cover new and useful inventions (product, composition, machine, process) or any new and useful improvement to an existing invention.
  • Copyright provides protection for literary, artistic, dramatic or musical works (including computer programs) and other subject-matter known as performer's performances, sound recordings and communication signals.
  • Industrial designs are the visual features of shape, configuration, pattern or ornament, or any combination of these features applied to a finished article.
  • Integrated circuit topographies are the three-dimensional configurations of electronic circuits embodied in integrated circuit products or layout designs.

Trade name vs. trademark

A trade name is the name of your business. A trade name can be registered under the Trade-marks Act only if it is also used as a trademark; that is, if it is used to identify goods or services.

For example, let us suppose that you own an ice cream business and that your company is called "A.B.C. Ltd.".

Example 1: People know your ice cream under the name "A.B.C. Ltd." because you use this name as a trademark that you place on your ice cream. You can therefore apply to register the trade name "A.B.C." as a trademark.

Example 2: People know your ice cream by the name "North Pole", which is what you use to promote your product. Even though the name of your company is "A.B.C. Ltd," no one thinks of that name when they think of what you sell. In that case, the name "A.B.C." is not a trademark; it is a trade name.

Note: A trademark registration may be cancelled if someone else in Canada has made use of a similar trade name or trademark in the past.

Registered trademark vs. unregistered trademark

When you register your trademark, you get the sole right to use the mark across Canada for 15 years. You can renew your trademark every 15 years after that.

Technically, a registered trademark is one that has been entered in the Register of Trademarks. The Registrar manages the Register. Registration is direct evidence that you own the trademark. (In a dispute, the registered owner does not have to prove they own the trademark; the duty is on the challenger.)

You do not have to register your trademark; by using a trademark for a certain length of time, you can come to own it according to common law. However, if you use an unregistered trademark and end up in a dispute, you could be looking at a long, expensive legal battle over who has the right to use it. If you fail to actually use the mark for a long time, your registration may be taken off of the Register of Trademarks, which will make it more difficult to prove legal ownership of the trademark.

Find more information about using your trademark in Canada.

Read about how to register trademarks outside Canada.

Note: You must apply to register any mark relating to precious metals. You must show a filing receipt when such goods go through customs.

What you can and cannot register as a trademark

What you can register:

You can register any trademark that does not disobey the Trade-marks Act. For more detailed information, see the Trade-marks Act.

What you can't register

The kinds of marks that you may not register include the following:

  • names and surnames
  • clearly descriptive marks
  • deceptively misdescriptive marks
  • words that represent a geographical location commonly known to be the place of origin of such goods or services
  • words in other languages
  • words or designs that could be confused with a registered trademark or pending trademark
  • words or designs that look very similar to a prohibited mark

Names and surnames

A trademark may not be registered if it is nothing more than a name or surname (for example, John Doe or Jane Smith, Wong, Cohen, etc.).

An exception is if you can prove that your goods or services have become well known under the name or surname so that the word has second meaning in the public mind. Another exception is a name or surname that has meaning other than strictly as a name or surname; that is, the name is also the word or name of a community, city, town, river, castle, etc. In that case, you could register your last name to use for your business as long as there were no other reasons you could not use it.

Clearly descriptive marks

You may not register a word that describes a feature of your goods or services (i.e., a word that is clearly descriptive).

For example, the words "sweet" for ice cream, "juicy" for apples, and "perfectly clean" for dry-cleaner services could not be registered as trademarks. All good apples could be described as "juicy" and all ice cream as "sweet"; these are natural characteristics of the items. If you were allowed to register these words, no other apple sellers or ice cream vendors could use them to promote their goods, and that would be unfair. But, again, if you can establish that "Sweet Ice Cream" has become so well known that people will immediately think of your product (and no one else's) when they read or hear these words, you may be allowed to register the trademark.

Deceptively misdescriptive marks

You cannot use a mark that is clearly misleading. For example, you could not register "sugar sweet" for candy sweetened with artificial sweetener or "air express" for a courier service that uses ground transportation.

Places of origin

You may not register a word that uses a geographical location known to be the place where the goods or services come from. Allowing you to use such place names as part of your trademark would mean you are the only one who can use the geographical term, and that would be unfair to others. For example, you could not register "Italy" for lasagna. However, you could perhaps register the words "North Pole" as your trademark for bananas, since one would not normally expect bananas to come from the North Pole.

Also, you may not register a word that misleads the public into thinking that the goods or services come from a certain place when they do not. For example, you could not register "Paris Fashions" or "Denmark Furniture" as a trademark for those goods or services if they did not come from there.

Words in other languages

You may not register words that are the name of the same goods or services in another language such as: "gelato" (Italian for "ice cream"); "anorak" (Inuktitut for "parka"); or "wurst" (German for "sausage").

Words or designs that could be confused with a registered trademark or pending trademark

Beware of words, designs and ideas that are similar to another person's or another organization's trademark. If your trademark is confusingly similar to a registered trademark or a pending trademark, it will be refused.

Trademark examiners look at many things when they decide whether trademarks are confusing, including:

  • whether the trademarks look or sound alike and whether they suggest similar ideas
  • whether the trademarks are used to market similar goods or services

Let's go back to the example of "North Pole" ice cream. Suppose another company were manufacturing and selling frozen-water products under the registered trademark "South Pole." The public could easily think that "North Pole" and "South Pole" products are made and sold by the same company, and may expect that the trademarks would be owned by the same organization. That could mean your application to register "North Pole" would be turned down because it could cause confusion with the registered mark "South Pole," which is owned by another company.

For more information on confusingly similar trademarks, you can read subsection 6(5) of the Trade-marks Act.

Words or designs that look very similar to a mark that you are now allowed to register

You may not register a trademark that looks similar to certain official marks unless you have the permission from the organization that controls the mark. These official designs include:

  • official government designs (e.g., the Canadian flag)
  • coats of arms of the Royal Family
  • badges and crests such as those of the Canadian Armed Forces and the letters RCMP
  • emblems and names of the Red Cross, the Red Crescent, and the United Nations
  • armorial bearings (coats of arms), flags and symbols of other countries
  • symbols of provinces, municipalities and public institutions

Subject matter that is obscene, scandalous or immoral is also not allowed. For example, your trademark may not include profane language, obscene visuals or racial slurs.

You may not use portraits and signatures of living people or people who have died within the last 30 years. For example, using the photo of an existing rock group to promote your record store is not allowed unless you have their permission.

A few other things you cannot do

You cannot register a trademark if it consists of a plant variety denomination (when a right is granted to the owner for control over the multiplying and selling of reproductive material for a particular plant variety) or is a mark so nearly resembling a plant variety denomination that it is likely to be mistaken for it, where the application covers the plant variety or another plant variety of the same species.

You cannot register a trademark that indicates the geographical origin of a type of wine or spirit unless you are making a wine or spirit from that geographical area. For example, you could not register "Okanagan Valley" if the wine you are making is from Ontario.

Who can apply for registration?

The Office of the Registrar of Trademarks (Registrar) does not register a trademark in the name of more than one person unless several people form a partnership or are working in a joint venture under law.

How long does registration last?

Your registration lasts for 15 years from the date of registration. You may renew it every 15 years after that for a fee.

How much does registration cost?

The cost of registering a trademark depends on your particular needs. In some cases, you pay only a filing fee and a registration fee. But sometimes you have to pay other fees. If you hire a trademark agent to represent you, that will also cost you some money.

What to consider before filing an application

The Registrar will give you the basic information you need to file an application so you can register your trademark. However, the Registrar cannot write your application for you, give you advice about whether your mark is "registrable", or do a search of trademarks for you.

Search the Canadian Trademarks Database

A good first step is to do a search of existing trademarks to check whether your trademark could be confused with someone else's. You do not have to do this, but it will help you know whether a similar trademark exists. If one does, you could end up infringing on someone's trademark, which could land you in court.

You can do a search through the Canadian Trademarks Database. The listings cover word marks, slogans, numbers, pictures and combinations of these. As soon as the Registrar gets your application, it too becomes part of the public record.

You can do searches many ways, including by trademark type or trademark status.

To do a proper search, you will have to check for different possible versions of the mark that you want to register. For a word mark, you should look for all possible spellings, including in French. For example, if your trademark is "North Pole," you would search for "North", "Nord", and "Pole."

The online records also list crests, badges and official symbols that fall into the category "prohibited marks" in the Trade-marks Act. These records can help you make sure that your trademark does not fall into a forbidden category.

To start your search, visit the Canadian Trademarks Database. Use our tutorial to make the most of your search.

Search trade names

Before you go any further, you should also search trade names. Trade names are often used as trademarks—even when they are not registered as trademarks.

Example: The name of your company is "North Pole." "South Pole Inc." has never filed for trademark registration. However, if the name "South Pole" is known for frozen-water products, the company could argue that it owns the name "South Pole" as a trade name and, therefore, also as a trademark.

The Registrar would not have the name "South Pole" in its trademark records because it does not register trade names. "South Pole Inc.", however, could easily find out that you are using "North Pole", either by doing a search of the Registrar's records or by seeing your application published in the Trade-marks Journal. "South Pole" may then challenge your application during the opposition stage in the registration process.

Please note that trade names can be recorded separately in each province under provincial legislation. Therefore, there is no single, complete list of trade names in Canada.

Since searching trade names can be quite complex, we suggest that you hire a trademark agent to do the work for you.

Consider hiring a registered trademark agent

Preparing and following through on your trademark application is a complex process. Whoever does it needs a lot of knowledge about trademark law and how the Registrar's office works.

Barristers, solicitors and notaries in the province of Quebec who are Canadian residents may become trademark agents by passing an exam.

Beware of unregistered trademark agents! They are not authorized to represent applicants in the presentation and prosecution of applications for trademarks or in other business before the Office of the Registrar of Trademarks.

A trained trademark agent will make sure that your application is properly written so that your trademark will be protected. This is especially important if someone challenges your right to the mark. You do not have to hire an agent but we highly recommend that you do.

Once you have an agent, the Registrar will work with that person. If you cancel that arrangement, the Office will then work with you directly. You may change trademark agents or choose to no longer have one at any time.

The Registrar keeps a list of registered trademark agents but we cannot recommend any particular one to you.

Filing a trademark application—Getting started

Preparing a trademark application

A complete application includes:

  • an application for registration
  • a formal drawing, if needed
  • the filing fee

Your application is the main document in registering your trademark. You must file a separate application for each trademark that you wish to register. However, one application can cover goods and services, or a number of goods or services, for a given trademark.

Here are two sample applications that can help you prepare your application. In some cases, we may ask you for more information than these samples show. This could happen in cases where your application has to do with:

  • certification marks
  • marks registered and used in another country
  • registration of a trademark "made known" in Canada

If you think that your application falls under one of these three categories, you should contact CIPO's Client Service Centre or your trademark agent.

Formal drawings

If your trademark is anything other than a word or words, then you need to include a formal drawing of the design when you file your application.

The formal drawing should:

  • be in black and white
  • include a description of the colour(s) if colour is a feature of your trademark

If you wish, you may use the special chart set out in section 28 of the Trade-marks Regulations to show your colours.

For detailed designs, a drawing as large as possible, but not larger than 22 cm x 35 cm (8.5 inches x 14 inches), will allow for the clearest reproduction.

Note: If you wish to keep your trademark registered, you must register your mark the way you will use it. In other words, you must not change it in any way, including changing the colour as you described them in your application.

Filing fees

When you send us an application to register a trademark, you must pay a filing fee.

You can pay by credit card (VISA, MasterCard, or American Express), direct payment, postal money order or cheque (postal money orders and cheques must be made payable, in Canadian dollars, to the Receiver General for Canada). Do not add federal and provincial taxes.

Filing your application

You may file your application and pay the fee online or you may send your finished application with your payment by mail to:

Office of the Registrar of Trademarks
Canadian Intellectual Property Office
Innovation, Science and Economic Development Canada
Place du Portage I
50 Victoria Street
Gatineau QC K1A 0C9

Filing date

Once the Registrar has received your application, staff will review it to make sure it is complete. If anything is missing, we will contact you to ask for more information. Once this process is finished, we will acknowledge that we have received your application and give it a filing date—that is, the date on which your application met all the filing requirements. This filing date is important since it is the date used to assess who is entitled to registration in the case of confusion between co-pending trademarks.

You may change your application in some ways after you have filed it. However, not all changes are acceptable. Certain changes will mean you have to file a new application.

The examination process

When the Registrar gets your application, we:

  • search trademark records to find any existing or pending trademark that could conflict with your trademark (if we find one, we will inform you)
  • examine the application to make sure it obeys the Trade-marks Act and Trade-marks Regulations, and tell you about any requirements that your application does not meet or any objection to registering your trademark
  • publish the application in the Trade-marks Journal, leaving time for opposition (challenges) to the application
  • allow and register your trademark if no one files an opposition to your application (or if any opposition filed has been decided in your favour)

Search

Examiners do a thorough search of records to make sure that your trademark does not conflict with one already filed or registered.

Examination

The trademarks examiner assigned to your file then reviews the search results and decides whether your application can be approved for advertisement. The examiner will let you or your agent (if you have one) know of any objections, if there are any. You then have a chance to respond. If your answers do not satisfy the examiner, you will get a letter telling you that your application has been refused and telling you why. If you receive a refusal, you have the right to appeal to the Federal Court of Canada.

Note: There is no special form for responding to an examiner's report unless you are asked to send a revised application.

Disclaimers

The examiner may ask you to disclaim the right to the exclusive use of a portion of the trademark if the appropriate disclaimer statement has not already been included in the application.

Pre-publication search

Before a trademark is advertised in the Trade-marks Journal, the Registrar does a second search (pre-publication search) to make sure that no one has recently registered or applied for a trademark that would conflict with the one you want to register. If there is a conflict, the Registrar will tell you (or your agent, if you have one) and ask for your comments.

Publication

If the pre-publication search does not show any new objections to your application, we will advertise it in the Trade-marks Journal. The journal is the official publication that lists every application that has been approved for advertisement in Canada. It gives information about your application, including your name and address, the file number, the filing date, the trademark, whether the application for registration is based on "use" or "proposed use", the goods and services that the trademark will represent, and any other claims (such as colour claims, disclaimers, etc.). By advertising applications, we give others a chance to object to it before it is registered.

The Trade-marks Journal is published every Wednesday.

Opposition

Any person with a reasonable argument for doing so can oppose a trademark application advertised in the Trade-marks Journal. The person must make the opposition within two months of the publication date by either filing a statement of opposition or asking for more time to oppose. The proper fee must be sent with the statement of opposition or request for more time. The Registrar will not allow any opposition that we consider to be frivolous.

If your application is opposed and you do not already have an agent, we urge you to hire one at this point. The same is true if you wish to oppose someone else's application. Opposition is a complex and often long process. Opposition proceedings are adversarial in nature and similar to court proceedings. Both parties may file evidence and counter-arguments, cross-examine the evidence of the other party, and appear at an oral hearing. After a final decision is made, it may be appealed to the Federal Court of Canada.

For more information, visit the Trademarks Opposition Board (TMOB) web pages on opposition proceedings, or contact us.

Allowance and registration

If there is no opposition, or if an opposition has been decided in your favour, the Registrar will allow your application and will not look at any further challenges. You will get a notice of allowance and be asked to pay a registration fee.

If your application is based on proposed use, the Registrar will ask you for a statement saying that you have started to use the trademark. If you have not yet started using the trademark, you may ask for more time until you are ready to use it.

The final step is for the Registrar to give you a certificate of registration and enter the trademark in the Register of Trademarks.

Abandonment

If you do not prosecute your application, the Registrar may consider it abandoned. Before this happens, the Registrar will contact you and give you a chance to correct the situation within a specific time period. If you do not respond within that time, you will have to file a new application (along with another fee).

Note: If you do not notify the Registrar of a change of address, the Registrar is not responsible for any correspondence that you or your agent or representative do not receive.

Communicating with the Office of the Registrar of Trademarks

Business with the Office of the Registrar of Trademarks is normally done in writing. All paper correspondence should be addressed to:

Office of the Registrar of Trademarks
Canadian Intellectual Property Office
Innovation, Science and Economic Development Canada
Place du Portage I
50 Victoria Street, Room C114
Gatineau QC K1A 0C9

Fax: 819-953-CIPO (2476)

Correspondence about opposition or summary expungement (section 45 of the Trade-marks Act) must be clearly marked "Attention: Opposition Proceedings" or "Attention: Section 45 Proceedings", depending on the contents of the letter, and addressed to:

Trademarks Opposition Board
Canadian Intellectual Property Office
Innovation, Science and Economic Development Canada
Place du Portage I
50 Victoria Street
Gatineau QC K1A 0C9

Fax: 1-819-997-5092

For more information, please consult CIPO's correspondence procedures.

If you are asking about the status of your application and it has not yet been given to an examiner, you should contact the Client Service Centre. If your application has been given to an examiner, please use the contact number, which you will find on the report sent to you by that examiner.

You can arrange a personal interview with a trademark examiner by making an appointment. This gives the examiner time to review your application before seeing you.

The Registrar will respond to all questions, but cannot:

  • do a search of the Canadian Trademarks Database for you
  • submit documents for registering transfers of ownership
  • give you legal advice, other than telling you about the Trade-marks Act, the Trade-marks Regulations, and other information that you can get on the CIPO and Innovation, Science and Economic Development Canada websites

To find out the status of active opposition or summary expungement files, please see the Canadian Trademarks Database.

Electronic services

When you use our electronic services, you can:

Trademark information—Beyond the basics

Registering a trademark outside Canada

Registering your trademark with the Registrar protects your rights in Canada only. If you wish to sell goods or services in other countries, you should think about getting trademark registration(s) there as well.

For more information, contact a trademark agent or the proper intellectual property office abroad.

Applicants who live outside Canada

If you are applying for registration of a trademark in Canada but are living in a country other than Canada, you must appoint someone (called representative for service) in Canada to whom the Registrar can send correspondence.

Your representative for service cannot act on your behalf in any business with our office. Only your patent agent can do that. The role of your representative for service is only to get correspondence from our office.

However, a registered trademark agent in Canada can also be your representative for service if you appoint them.

Please contact CIPO's Client Service Centre if you need more information.

Expungement of a trademark registration

When someone registers a trademark, they gain a very valuable right. However, they can lose that right (expungement, or removal, from the Register of Trademarks) unless they carry out specific responsibilities. A trademark can be expunged for reasons related to owning a trademark, the distinctiveness of a trademark, abandoning a registered trademark, and not using a trademark.

Please contact CIPO's Client Service Centre if you need more information.

Renewal fee

To maintain your trademark registration, you have to pay a renewal fee every 15 years. If you do not, your trademark will be expunged (removed) from the Register of Trademarks. The Registrar will send you a notice with information about your payment deadline.

Use in Canada (section 45 proceedings)

Another of your responsibilities as the owner of a trademark is to use the trademark in Canada. If you do not use it, the registration could be expunged from the Register of Trademarks by either the Registrar or the Federal Court. The Registrar could start summary expungement proceedings, even years after the date of registration, either on their own at any time during the life of the registration, or if another party pays the proper fee and asks them to.

The procedure begins when the Registrar sends a notice to the registered owner asking him or her to provide evidence showing that the trademark has been used in Canada during the last three years or to prove that there are special circumstances that excuse the fact that the trademark has not been used. If the owner fails to reply to the Registrar, the trademark will be expunged from the Register of Trademarks.

Once the Registrar has received the necessary evidence, the owner and the other party can send in written arguments and also appear at an oral hearing. After the Registrar has made a final decision to expunge, amend or maintain the registration, the owner or other party can appeal to the Federal Court of Canada.

The process we have outlined here is complex. We recommend that you use a registered trademarks agent to help you through it.

For more information, visit our web page on section 45 proceedings or contact us.

Transfers

A trademark is a form of property. You can sell, bequeath or transfer your rights to someone else through an assignment. To avoid ownership disagreements, you should formally tell the Registrar about changes in ownership.

You should also tell the Registrar about anything else that affects who owns a trademark, such as a change of name or a business merger.

Marking requirements

According to Canada's Trade-marks Act, you do not have to mark your trademark with any particular symbol. However, many owners use the following symbols to show that their trademark is registered:

  • R (registered)
  • TM (trademark)
  • SM (service mark)
  • MC (marque de commerce)

Note about precious metals: The Precious Metals Marking Act, which applies to trademarks registered in Canada, states that you must file a trademark application for the trademark that you use on the goods that you sell if you wish to stamp a quality mark, for example, "10K gold," on your goods. However, you do not have to use the quality mark itself.

Policing your trademark

It is up to you to make sure nobody is using your trademark without your permission and to take legal action if someone does. You also need to take action if you come across a trademark or a trade name that could be confused with your mark. You do not want anyone imitating your trademark.

There is a good reason for this, beyond just the imitation. If your business is successful and someone imitates your trademark, it may be in danger of becoming a generic term. For example, if consumers start saying "North Pole" when they mean any ice cream, in the same way that the trademark "zipper" is now what nearly everyone says when they mean "slide fastener", your trademark may no longer be unique.

Additional Information

Websites of interest

The following are a few websites you may find helpful.

General interest

Innovation, Science and Economic Development Canada
The Canadian Intellectual Property Office, which includes the Trademarks Office, is a special operating agency of Innovation, Science and Economic Development Canada.

Corporations Canada
Helps Canadians incorporate, maintain and operate businesses, not-for-profit corporations, and other corporate entities.

Canada Business Network
This is a single access point for federal and provincial/territorial government services, programs and regulatory requirements for businesses.

Plant Breeders' Rights Office (Canadian Food Inspection Agency)
This office oversees the Plant Breeders' Rights Act and Plant Breeders' Rights Regulations, which protect the legal right of plant breeders for their new plant varieties.

Intellectual property

Canadian Trademarks Database
This is a searchable database of all active and inactive trademark applications and registrations in Canada. It also shows the status of all active opposition and summary expungement (section 45) cases.

Trademarks Opposition Board
Oversees and provides information about trademark opposition and summary expungement proceedings (section 45 proceedings) in Canada.

WIPO Intellectual Property Digital Library
Provides access to intellectual property data collections hosted by the World Intellectual Property Organization (WIPO).

United States Patent and Trademark Office—English content only
Processes patent and trademark applications and provides information, resources and services for trademarks and their registration in the United States of America.

Related acts and case law

Precious Metals Marking Act
Sets out the rules for using quality marks for precious metals. This helps prevent the registration of trademarks that may be misread as quality marks.

Bank Act
Regulates Canada's chartered banks, and restricts the use of the term "banking services" in order to prevent unauthorized use of this term.

Canada Post Corporation Act
Regulates mail service in Canada and prohibits unauthorized use of words such as "mail", "letter", and "post" and the unauthorized sale of postage stamps.

Federal Court of Canada
Provides a searchable database of all decisions made by the judges of the Federal Court and the Federal Court of Appeal.

Supreme Court of Canada
Provides a searchable database of all decisions made by the Supreme Court of Canada.

Filing a trademark application—Two sample applications

When you apply for a trademark, you will need to use one of the application formats that our office provides or create your own. Below, we show the two application formats that applicants use most often.

The first (Example 1) is based on use of your trademark in Canada. The term "use" refers to current and past use of the trademark in Canada. To show you how this format looks, we have provided the following information:

  • The applicant's name and complete mailing address
  • The trademark, consisting of a design
  • The statements of "use in Canada," setting out:
    • the goods and services with which the applicant has used the trademark
    • the date of first use for each category of goods or services
  • The entitlement paragraph, where the applicant states that he or she is entitled to use the trademark in association with the goods and services listed in the application

The second (Example 2) is based on "proposed use". This term refers to the fact that the applicant has not begun using the mark yet, but plans to use it in Canada in the future. The term "future" means within three years from the date of filing or six months from the date of the notice of allowance. To show you how this format looks, we have provided the following information:

  • The applicant's name and complete mailing address
  • The trademark, consisting of letters/words (e.g., ABC D-LICIOUS)
  • The statements of "intent to use" along with the goods and services with which the applicant intends to use the trademark
  • the entitlement paragraph, where the applicant states that he or she is entitled to use the trademark in association with the goods and services listed in the application

For help or more information on trademarks registration applications, contact CIPO's Client Service Centre.

Example 1: Sample application for registration of a trademark in use in Canada

To the Registrar of Trademarks, Gatineau, Canada.

The applicant, DEF Inc., whose full post office address of its principal office or place of business is 456 Number Avenue, Ottawa, Ontario, D4E 5F6, applies for the registration of the trademark identified below.

The trademark is:

The trademark has been used in Canada by the applicant in association with blouses, sweaters, pants, skirts, socks, underwear and pyjamas since June 03, 1973.

The trademark has been used in Canada by the applicant in association with retail clothing store since September 17, 1973.

The trademark has been used in Canada by the applicant in association with retail jewellery store since July 02, 1998.

The applicant is satisfied that he or she is entitled to use the trademark in Canada in association with the goods and services described above.

Example 2: Sample application for registration of a proposed trademark

To the Registrar of Trademarks, Gatineau, Canada.

The applicant, ABC Limited, whose complete mailing address of its principal office or place of business is 123 Alphabet St, Ottawa, Ontario, A1B 2C3, applies for the registration of the trademark identified below.

The trademark is

ABC D-LICIOUS

The applicant intends to use the trademark in Canada in association with prepared meals and requests registration of the trademark in respect of such goods.

The applicant intends to use the trademark in Canada in association with restaurant services and take-out food services and requests registration of the trademark in respect of such services.

The applicant is satisfied that he or she is entitled to use the trademark in Canada in association with the goods and services described above.

Common errors

Before you file your trademark application, take some time to go through the following checklist. The fewer errors you make, the more quickly your application will go through.

Fee

Remember that each application must be accompanied with a filing fee (non-refundable).

Note: You can pay by credit card (VISA, MasterCard, or American Express), direct payment, postal money order or cheque (the postal money order or cheque must be made payable, in Canadian dollars, to the Receiver General for Canada). Do not add federal and provincial taxes.

Goods/services

You may not use a trademark registered by someone else to describe your goods or services. Many registered trademarks that you may not use in your description have become part of everyday language. A few examples are "yo-yo," "bubble wrap," and "Kleenex." Search the Canadian Trademarks Database to find out which words you cannot use.

Make sure that you include all the goods or services with which you plan to use, or have used, your trademark. You may not add goods or services to the list after you have filed the application. Remember that you have to list the goods or services that have been used separately from goods or services that are you are proposing to use.

The Trade-marks Act says that you must talk about the goods or services you are applying for in specific, ordinary commercial terms. In other words, your application should use common names for the goods and services and use wording that is as complete and as specific as possible (e.g., shirt, bread, sofa, etc.). To help you with this, the Goods and Services manual shows the words you can use for many goods and services. It also gives guidelines for how to identify goods and services not listed.

Date of first use in Canada

If you have already used your trademark in Canada for certain goods or services, you must provide the Registrar with the date you first used it. Make sure that the date of first use does not fall AFTER the filing date of your application. If the date of first use falls AFTER the filing date, it may be best to file for a proposed trademark.

Acceptable date of first use

If you give only the month and year as the date of first use, our office will use the last day of that month as the correct date. If you name only the year, we will use December 31 as the correct date. However, in all cases, the date of first use cannot be after the date you filed the application. For example, if you filed your application in 2004, and then say that you have used your trademark in association with your goods or services "since 2004," the Registrar will assume that this means that you have been using the goods or services since the last day of 2004. This could mean that your date of first use is not acceptable if you filed in 2004 prior to December 31—since the date of first use would then fall AFTER your filing date.

Is it a word or is it a design?

You must be clear about what you wish to register. Is it a word or words not shown in a special form? Is it a design that includes a special form? In the first case, where there is no special form, just say "The trademark is" and, following this statement, set out the word or words in upper- or lower-case letters. In the second case, where the trademark is a design, state, "The trademark is shown in the accompanying drawing" and attach the drawing to the correct area of the application. If you are having trouble deciding what you want to register, see the application section of this guide.

Applicant

The Office of the Registrar of Trademarks (Registrar) does not register a trademark in the name of more than one person unless several people form a partnership or are working in a joint venture under law.

Frequently asked questions

1. What are trademarks?

Trademarks can be one or many words, sounds or designs used to distinguish the goods or services of one person or organization from those of others.

Over time, trademarks come to stand for not only the actual goods or services a person or company makes, but also the reputation of the producer. Trademarks are very valuable intellectual property.

There are three types of trademarks:

  • An ordinary mark is made up of words, sounds, designs or a combination of these used to distinguish the goods or services of one person or organization from those of others. For example, suppose you started a courier business that you chose to call Giddy-up. You could register these words as a trademark (if you met all the legal requirements) for the service that you offer.
  • A certification mark can be licensed to many people or companies for the purpose of showing that certain goods or services meet a defined standard. For example, the Woolmark design, owned by Woolmark Americas Ltd., is used on clothing and other goods.
  • A distinguishing guise is about the shape of goods or their containers, or a way of wrapping or packaging goods that shows they have been made by a specific individual or firm. For example, if you manufactured butterfly-shaped candy you could register the butterfly shape as a distinguishing guise.
2. How do I file a trademark in Canada?

You may file online or by fax (819-953-2476). You can also print forms directly from our website.

3. What are the steps to obtain a trademark registration?

Trademark registration usually involves:

  • filing of your application
  • examination of your application
  • publishing of your application in the Trademarks Journal
  • a waiting period to allow people to oppose your application
  • allowance of your application (if there is no opposition or if any opposition raised is decided in your favour)
  • registration of your trademark
4. How much does registration cost?

You must pay a filing fee and a registration fee in all cases. See our fees.

If you appoint a trademark agent to represent you, you will have to pay that person for their services.

5. What is the difference between a registered and an unregistered trademark?

A registered trademark is one that has been entered in the Register of Trademarks. The Register of Trademarks is the record of all trademarks that have been formally applied for and registered in Canada. The Office of the Registrar of Trademarks is the body that oversees the register.

6. What cannot be registered?

The kinds of marks that the Trade-marks Act does not permit you to register include the following:

  • names and surnames
  • clearly descriptive marks
  • deceptively misdescriptive marks
  • words that represent a geographical location commonly known to be the place of origin of such goods or services
  • words in other languages
  • words or designs that could be confused with a registered trademark or pending trademark
  • words or designs that look very similar to a prohibited mark
7. Who can file for the registration of a trademark?

Companies, individuals, partnerships, trade unions or lawful associations, provided that they comply with the requirements of the Trade-marks Act and Trade-marks Regulations.

8. Can I file for a word and a design together on the same application?

If you plan always to use the combination of the word(s) and the design together in association with your goods and services, you may file one application showing the trademark as the combination of word(s) and design in black and white.

However, if you plan to use the word(s) separately from the design, you may wish to file two separate applications: one for the word(s) and one for the design.

9. What is the difference between a company name and a trademark?

A trade name is the name under which you conduct your business. A trade name can be registered under the Trade-marks Act only if it is also used as a trademark—that is, if it is used to distinguish your goods or services from those of others.

10. Should the ® or TM symbol be part of my trademark?

No. Canada's Trade-marks Act does not include any marking requirements.

Note about precious metals: The Precious Metals Marking Act, which applies to trademarks registered in Canada, states that you must file a trademark application for the trademark that you use on the goods that you sell if you wish to stamp a quality mark, for example, "10K gold," on your goods. However, you do not have to use the quality mark itself.

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