Overview of Trademark Applications to the Canadian Intellectual Property Office
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Memo: Overview of Trademark Applications to the Canadian Intellectual Property Office
This memorandum addresses how to select the relevant classification of a company’s goods and services for the purposes of submitting a trademark application with the Canadian Intellectual Property Office (the “CIPO”) and the World Intellectual Property Organization (the “WIPO”). This memorandum also discusses how to include CIPO-compliant descriptions of the company’s goods and services in a trademark application and will briefly discuss applicable fees for filing a trademark application with the CIPO and the WIPO.
This memorandum is intended for general information purposes only. It does not address all the requirements of applying for and registering a trademark with the CIPO or the WIPO. There are many other requirements and obligations involved in registering a trademark that are beyond the scope of this memorandum.
1) Overview of Trademarks
a. 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. It may be a combination of words, sounds, designs, tastes, colours, textures, scents, moving images, or even a three-dimensional shape that distinguishes the goods or services. Trademarks are valuable intellectual property.
b. Trademark requirements
Any trademark that does not contravene the Trademarks Act can be registered. However, there are some general rules of thumb that are useful in determining what cannot be registered as a trademark. These include:
Names and surnames (the trademark must be more than just a name or surname).
Clearly descriptive marks (e.g., “Sweet” for ice cream).
Deceptively misdescriptive marks (e.g., “cane sugar” for candy sweetened with artificial sweetener).
Place of origin (e.g., “Halifax Fashion”).
Words in other languages (e.g., “wurst” - German for “sausage” – in association with meat).
Trademarks that would be confusing with a registered or pending trademark.
Trademarks that are identical to or could be mistaken for prohibited marks.
Trademarks that are primarily functional in nature.
c. Registered trademark vs. unregistered trademark
Registering a trademark is one way to protect your corporate image. A registered trademark is one that has been entered into the register of Trademarks. This requires completing a trademark application. Upon successful registration of the trademark, you will be issued a certificate of registration that acts as direct evidence of trademark ownership. If you successfully register your trademark with the CIPO, you will have the sole right to use the trademark all across Canada for 10 years, with the right to renew it every 10 years.
Although registering your trademark is the best way to protect it, it is not a necessary step. After a certain length of time of using a trademark, you may have rights to the trademark under common law as an unregistered trademark. However, unregistered trademarks carry a certain degree of risk, such as potential disputes with similar or identical registered trademarks and expensive legal battles. An unregistered trademark will also only be protected in the geographical region in which you can prove its use. Only registered trademarks are protected under the Trademarks Act.
2) The Main Components of a Trademark Application with the CIPO
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.
a. A representation or description (or both) of the trademark
The representation or description (or both) of the trademark must clearly indicate what is being sought for registration. The representation must not exceed 8 cm x 8 cm in size. Representation of colour trademarks, or trademarks that are claiming colour(s) as a feature, must be submitted in colour along with a description of the colour(s) and where they appear in the trademark.
Non-traditional trademarks include a sound, hologram, moving image (motion), scent, taste, colour per se (a single colour or combination of colours without delineated contours), three-dimensional shape, mode of packaging goods, texture, or position of a sign. Electronic representations and a description of the trademark are required for sound and moving image trademarks. For more information on non-traditional trademarks, please see the Government of Canada’s Practice Notice.
b. A statement in specific and ordinary commercial terms of the goods and services associated with the trademark
When registering your trademark, you will also be required to provide a description of the goods and services offered by your company that is compliant with the Trademark Act and Trademark Regulations.
An application for a trademark must contain "a statement in ordinary commercial terms of the specific goods or services in association with which the trademark has been used or is proposed to be used" and this statement of the goods or services "must describe each of those goods or services in a manner that identifies a specific good or service."
There are several options available to help you determine the appropriate description(s) to use in your trademark application to the CIPO:
CIPO’s Goods and Services Manual: The CIPO’s Goods and Services Manual (the “Manual”) is a tool that contains pre-approved terms that CIPO has deemed acceptable to use to describe goods and services. By using terms found in the Manual, applicants will avoid objections raised by the CIPO (so long as they correspond to the correct Nice Classification). The Manual is also useful for determining what goods or services would be deemed acceptable for the purpose of grouping the goods or services according to the classes of the Nice Classification.
CIPO’s Canadian Trademarks Database: The Canadian Trademarks Database can be used to discover similar or identical trademarks for related goods and services, as well as to compare the descriptions used in successful applications of related goods and services to your own application.
WIPO’s Global Brand Database: The WIPO Global Brand Database allows anyone to conduct an in-depth search of trademark applications in a variety of jurisdictions. Even if you do not intend to apply for an international trademark, you should use the WIPO database before submitting an application to CIPO. This database can help you discover if a mark similar to yours is already in use for the same or related goods or services.
c. A statement of goods and services grouped according to the Nice Classification
The Nice Classification is an international classification system used to classify goods and services for the purposes of the registration of marks. There are 45 classes of goods and services. All goods and services in a trademark application must be grouped according to the classes of the Nice Classification.
The class headings describe in very broad terms the nature of the goods or services contained in each class. These headings are only a general indication relating to the class to which the goods or services belong and are not to be used to identify one’s own particular goods or services.
Review the explanatory notes for each of the Classes to determine what Class your goods or services fall under. If your company intends to provide multiple goods or services, then multiple classifications and descriptions will need to be included in your application.
If the CIPO disagrees with the classification of goods or services, the examiner will issue a report requesting that you re-classify the goods and services. This report will include an explanation as to why the classification information was not acceptable. The CIPO will not classify the goods or services on your company’s behalf.
d. Application fees
The online application fee with the CIPO is $330 and includes the first class of goods or services contained in the application. The fee for each additional class is $100 and, if applicable, is required in order for the application to proceed to advertisement in the Trademarks Journal (a necessary step in the trademark application process).
For more information on the trademark application process, please visit the CIPO’s webpage “how your trademark application is processed”. For more information about application process times, please visit “performance targets”.
3) International Trademark Applications
a. Overview
In order to file an international application, you must have already applied for or registered a mark in your “home” Intellectual Property Office (i.e., with CIPO). In your international application, the Contracting Party in which you apply for or register your basic mark with is referred to as the “Office of Origin.” You must submit your international application through this Office of Origin.
Once the Office of Origin confirms that your international application corresponds with the particulars of the “home” trademark application, then the application will be certified and submitted to the WIPO.
As with any trademark application to CIPO, your goods and services will need to be classified in accordance with the Nice Classification for your international trademark application.
Use the WIPO Global Database to search for similar companies, trademarks, and descriptions before submitting an application to the CIPO or WIPO.
For in-depth guidance related to the various steps of the international registration procedure, please visit WIPO’s Guide to the International Registration of Marks under the Madrid Agreement and Madrid Protocol.
b. WIPO Fees
Before filing your application, use the WIPO’s Fee Calculator to estimate the amount of fees payable. The cost of an international trademark registration includes the basic fee (653 Swiss francs; or 903 Swiss francs for a mark in color). There will also be additional costs depending on where you want to protect your mark, and how many classes of goods and services will be covered by your registration.
For an overview of the basic, complementary, and supplementary fee amounts, see the Schedule of Fees. All fees must be paid in Swiss francs.
4) Pros and Cons of Filing Your Own Trademark Application
Although there is no legal requirement that you hire a registered trademark agent, there are several reasons why this option should be considered. Ensuring that your trademark does not contravene the Trademark Act, and that your trademark application is successful, can be a complex process and typically requires substantial knowledge not only about trademark law, but also about the procedural aspects of the Registrar’s office.
Pros:
Filing on your own can save costs associated with hiring a trademark agent.
You maintain control over the entire application process.
Cons:
The application process can be complex and time-consuming.
A lack of experience with trademark law may result in errors or omissions that could jeopardize the application.
Potential delays if the application is not completed correctly or if the CIPO raises objections.
Registered trademark agents can help ensure that your application is properly written so that your trademark will be protected. This agent will also act as the point of contact with the Registrar. This arrangement can be changed at any time. The Registrar keeps a list of registered trademark agents. We strongly recommend that you discuss your application with a trademark agent before filing.
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