Trademarks guide

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

On this page

  1. Understanding trademarks
  2. Filing a trademark application
  3. Registering a trademark outside Canada
  4. Expungement of a trademark registration
  5. Renewal fee
  6. Use in Canada (section 45 proceedings)
  7. Transfers
  8. Marking requirements
  9. Policing your trademark
  10. Common errors
  11. Example of a trademark application
  12. Additional Information

1. Understanding trademarks

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 is a trademark? A trademark is a sign or combination of signs used or proposed to be used by a person to distinguish their goods or services from those of others.

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

There are several types of trademarks:

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

Trade name vs. trademark

A trade name is the name of your business. A trade name can be registered under the Trademarks 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. Ltd." 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. Ltd." is not being used as a trademark but rather as 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 10 years. You can renew your trademark every 10 years after that.

A registered trademark is one that has been entered in the Register of Trademarks. The certificate of registration is direct evidence that you own the trademark.

You do not have to register your trademark; by using a trademark for a certain length of time, you may have rights under 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.

Read about how to register trademarks outside of Canada later in this Guide.

What you can and cannot register as a trademark

What you can register

You can register any trademark that does not contravene the Trademarks Act. For more detailed information, see the Trademarks Act.

What you can't register

Trademarks that are generally unregistrable include the following:

Names and surnames

A trademark may not be registered if it is nothing more than a name or surname.

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 acquired a second meaning in the public mind.

Clearly descriptive marks

You may not register a trademark that clearly describes a characteristic or quality of your goods or services.

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 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 register a trademark that is deceptively misleading. For example, you could not register "cane sugar" for candy sweetened with artificial sweetener or "air express" for a courier service that uses ground transportation.

Place of origin

You may not register a trademark that describes the geographical location where the goods or services come from. Allowing you to use such place names as your trademark would mean you are the only one who can use the geographical place name, and that would be unfair to others who trade in that place. For example, you could not register "Italy" for lasagna.

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 goods or services if they did not come from there.

Words in other languages

You may not register trademarks that are the name, in any language, of the goods or services associated with your trademark. For example, you would not be able to register the word "gelato" (Italian for "ice cream") in association with frozen confections; "anorak" (Inuktitut for "parka") in association with outerwear; or "wurst" (German for "sausage") in association with meat.

Confusing with a registered or pending trademark

Beware of trademarks that are similar to another trademark that is registered or is the subject of a previously-filed application. 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:

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 refer to subsection 6(5) of the Trademarks Act.

Trademarks that are identical to, or likely to be mistaken for, prohibited marks

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

Subject matter that is scandalous, obscene, 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 wine, spirit, or agricultural product or food unless your goods are from that geographical area. For example, you could not register the trademark "Okanagan Valley" if the wine you are making is from Ontario.

Who can apply for registration?

In order to be entitled to registration of a trademark, an applicant must be a "person". A "person" may be an individual, partnership, trade union, association, joint venture, or corporation. An applicant can include two or more persons, for example “John Doe, Jane Smith”.

How long does registration last?

Your registration lasts for 10 years from the date of registration. You may renew it every 10 years after that for a fee.

How much does an application cost?

You must pay an application fee when submitting your application for the registration of a trademark.

What to consider before filing an application

This guide will give you the basic information you need to file a trademark application. However, the Registrar cannot write your application for you, give you legal or business advice, 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 confusing with someone else's. You do not have to do this, but it will help you know whether similar trademarks exist. If they do, 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 trademarks (active and inactive), official marks and prohibited marks. As soon as the Registrar receives your application, it too becomes part of the public record.

To do a proper search, you will have to check for different possible versions of the trademark that you want to register. For a standard character trademark (word or words), 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."

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 if they are not registered.

Example of search trade names

The name of your company is "North Pole." A company called "South Pole" has never filed for trademark registration. However, if the name "South Pole" has become known for frozen-water products, the company could argue that it has rights in the name "South Pole" as a trade name and 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", 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 Trademarks Journal on the website of the Canadian Intellectual Property Office. "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 can be a complex process. Whoever does it needs a lot of knowledge about trademark law and how the Registrar's office works.

Beware of unregistered trademark agents! They are not authorized to represent applicants in the prosecution of trademarks applications.

A 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 trademark. You do not have to hire an agent but it is often advisable to do so.

Once you have an agent, the Registrar will correspond with that person. If you cancel that arrangement, the Office will then correspond 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.

2. Filing a trademark application

Preparing a trademark application

A complete application includes:

You must file a separate application for each trademark that you wish to register. However, one application can cover a number of goods or services for a given trademark.

Representation or description

Your application must include a representation or description, or both, of the trademark which clearly indicates what is being sought for registration.

The representation may contain more than one view of the trademark if multiple views are necessary for the trademark to be clearly defined. In addition, the representation must not exceed 8cmx8cm in size.

For colour trademarks or trademarks that are claiming colour(s) as a feature, representations must be submitted in colour, along with a description of the colour(s) and where they appear in the trademark.

For sound and moving image trademarks, an electronic representation and a description of the trademark is required.

For more information on the representation and description requirements for non-traditional trademarks, please refer to the Practice notice on non-traditional trademarks.

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

Application fees

When you send us an application to register a trademark, you must pay the application fee. The fee is made up of the base fee which includes one class of goods or services and another fee for each additional class of goods or services.

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.

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

After the Office receives your application and grants it a filing date, we:

Search

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

Examination

The examiner assigned to your file reviews the search results, determines if the trademark is registrable, and decides whether your application can be approved for advertisement. The examiner will let you or your agent  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 explaining 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.

Pre-publication search

Before a trademark is advertised in the Trademarks Journal, the examiner performs second search (a 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 and ask for your comments.

Publication

If the pre-publication search does not show any new confusing trademarks, we will advertise the application in the Trademarks Journal published on our website every Wednesday. The Journal is the official publication that lists every application that has been approved for advertisement in Canada. It gives information about an application, including the name and address of the applicant, the file number, the filing date, the trademark, and the associated goods and services. By advertising applications, we give others a chance to object to them before they are registered.

Opposition

Any person can oppose a trademark application advertised in the Trademarks Journal . The person must file either a statement of opposition or a request asking for more time to oppose within two months of the advertisement. The proper fee must be sent with the statement of opposition or the 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. You can find a list of agents here.

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 written representations, 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.

Registration

If there is no opposition, or if an opposition has been decided in your favour, the Registrar will register your application and will not look at any further challenges. The Registrar will send you a certificate of registration and enter the trademark in the Register of Trademarks.

Abandonment

If you do not respond to an examiner's report, the Registrar may consider your application to be abandoned. Before this happens, the Registrar will notify 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 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 Trademarks Act) must be clearly marked "Attention Opposition Board" 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: 819-953-CIPO (2476)

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 on the report sent to you by that examiner.

The Registrar will respond to all questions, but cannot:

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

Electronic services

You can use our electronic services to:

You can use the TMOB's online web application to:

Opposition proceedings

Section 45 proceedings

3. Registering a trademark outside Canada

Registering your trademark with the Registrar protects your rights in Canada only. If you wish to market goods or services in other countries, you should think about getting trademark registration(s) there as well. For more information, please refer to the International Trademarks under the Madrid Protocol or contact a trademark agent.

4. 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 registration can be expunged for several reasons, including:  the trademark losing its distinctiveness, abandonment of the trademark, and non-use of the trademark.

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

5. Renewal fee

To maintain your trademark registration, you are required to pay a renewal fee every 10 years. If you do not, your trademark will be expunged from the Register of Trademarks. The Registrar will send you a notice with information about your payment deadline.

6. 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 the Registrar. The Registrar could start summary expungement proceedings, after three years beginning on the day on which a trademark is registered, 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 them 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 is liable to be expunged from the Register of Trademarks.

Once the Registrar has received the requested 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.

7. 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 the ownership a trademark, such as a change of name or a business merger.

8. Marking requirements

There is no legal requirement to mark your trademark with any particular symbol. However, many owners use the following symbols to show that their trademark is registered:

9. Policing your trademark

It is up to you to make sure nobody is using your trademark without your permission and to take action if someone does. You may wish to take action if you come across a trademark or a trade name that could be confused with your registered trademark, as 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", the rights in your trademark may no longer be enforceable.

10. 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 by an application 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 or services

You may not use a trademark registered by someone else to describe your goods or services. Many registered trademarks have become part of everyday language, but you cannot use them to describe your goods or services. A few examples are "yo-yo," "bubble wrap," and "kleenex".

Make sure that you include all the goods or services with which you plan to use, or have used, your trademark, and that they are grouped according to the classes of the Nice Classification. You may not expand the scope of goods or services after you have filed the application.

The Trademarks Act states that the description of the goods or services you are applying for must be in specific and 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., shirts, bread, sofas, etc.). To help you with this, the Goods and Services Manual list acceptable wording for many goods and services. It also gives guidelines for how to identify goods and services not listed.

11. Example of a trademark application

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 a design, the representation of which is shown below:

Representation of a trademark design

Statement of goods and services

Class 25

Blouses, sweaters, pants, skirts, socks, underwear and pyjamas.

Class 35

Operation of an online retail clothing store; operation of an online retail jewellery store.

Additional Information

Websites of interest

The following are a few websites you may find helpful.

General interest

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

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

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.

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