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Trade Marks - Frequently Asked Questions*

What is a trade mark?

A word or words, symbol, design or combination which distinguishes one product or service from another and identifies the source for purchasers, e.g. STARBUCKS for coffee.

Why register?

Registration in the Canadian Intellectual Property Office (CIPO) is proof of ownership, warns competitors of your prior rights and is enforceable against infringers anywhere in Canada.

Registration is not mandatory, but has some important advantages:

others can search the register to avoid a conflict with your mark
the CIPO can refuse registration to a confusingly similar mark
it's enforceable anywhere in Canada
you can use it to claim priority in other countries
it's virtually incontestable after five years
it supports the registration and protection of a similar domain name
a registration can be an important intellectual property asset

Does a registered business, trade, corporate or domain name have the same legal effect as a registered trade mark?

No. A registered trade mark will generally prevail over all of these if there is any confusion over similar wares or services.

What does the process of registration involve?

There are several stages:

Searches to identify any conflicts or problems.
Preparing and filing the application.
Examination by the CIPO.
Advertisement in the Trade Marks Journal if it is approved.
Opposition if a third party objects.
Allowance if there's no opposition.
Registration.

Who can apply?

Individuals, partnerships, companies, legal associations and joint ventures.

If two trade marks are confusing, which one has priority?

The one that was filed or used first in association with goods or services in Canada.

What trade marks are not registrable?

Marks which are confusing with an existing trade mark. Names and surnames, unless they are famous. Words which are clearly descriptive or deceptively misdescriptive of the goods or services or where they come from, eg. MINTY for mints. Prohibited marks such as the Red Cross emblem or the flag of a country.

Name and address of the applicant.
The trade mark. If it's a design, send us a clear copy.
How the applicant came to own the trade mark and the name of any party who owned or used it previously.
Whether the mark has been used in Canada and, if so, how, since when and with what kind of wares or services.
The name of any party other than the applicant who is using or is going to use the mark and how it is being used or will be used.
A description of all wares or services to be associated with the trade mark.
Details of any pending applications/registrations for the same mark outside of Canada.

Foreign applicants and associates should note:

No power of attorney or other legalization is required.
Canada does not follow the International Classification System, so goods and services should be described in ordinary commercial terms.
Canada is a signatory to the Paris Convention so foreign applicants from other member countries can claim convention priority if the Canadian application is filed within 6 months of the original filing.
The applicant does not have to sign the application.
Filing in our local CIPO office has the same effect as filing in Ottawa.
Vancouver is 3 time zones behind Toronto, Montreal and Ottawa, so we have an extra 3 hours to meet any urgent deadlines.
We accept payment by VISA.

*See Fine Print