The trade-mark process consists of the following steps:
The first pre-step is to conduct a preliminary search in order to determine and reveal whether the proposed trade-mark is identical or similar to any registered and/or pending trade-marks, dealing with associated wares and/or services that could bar the proposed trade-mark from registration. Said otherwise, it is imperative to check whether your proposed trade-mark is in confusion with someone else’s.

We consider this step as mandatory since it assists you in determining whether your proposed trade-mark has or is in sue by someone else so to avoid any potential unauthorized use.

Similarly, a trade name search is advisable since trade names are often also used as trade-marks.  Such search covers all recorded trade names under federal and provincial legislation.
In the formalities phase, an application must be filed containing the following:

  • The name and address of the applicant;
  • A drawing of the trade-mark, unless the trade-mark consists solely of a word(s);
  • The wares/products or services in association with which the trade-mark is proposed to be used, or has been used;
  • Either a statement indicating intention to use a certain trade-mark and how that use will occur or the date of first use of the trade-mark in Canada, whichever is applicable;
  • Appointment of a representative and/or agent; and
  • The application fee.

Once filing is completed, a formal Filing Acknowledgement and a proof sheet listing the information included in the application will be received from the trade-mark office. If the application is correct and complete, the acknowledgement and proof sheet will be mailed within seven (7) days after the application is received.

The filing date of an application for the registration of a trade-mark is the date on which the application, setting out the information listed above, is delivered to the Registrar.

If the application is in good order and complete, including the correct fee, a filing date and an application number will be assigned to the application. The application will be entered on the Canadian Trade-marks Database as well as other databases maintained by external companies. The application will be labelled “Pending.”
A trade-mark examiner will review the application and determine if the trade-mark can be approved for advertisement in the Trade-marks Journal. You will be sent a formal Notice of Approval once your application is approved. In the event of any doubts about the application, the examiner will notify the objections by way of an examiner’s report. You will then have the opportunities to respond. If the objections answers still fail to satisfy the examiner, a letter will be sent informing that the application has been refused and explaining the reasons why. In the event of a refusal, a right to appeal is allowed to the Federal Court of Canada.

If the application is approved without amendments, the Approval Notice should be mailed within six (6) months. If the application contains complex problems, the examiner’s report should be mailed within six (6) months.
If the application is approved, it will be published in one issue of the Trade-marks Journal, which is published weekly and available by subscription and in some major libraries in Canada. The application should appear in the Trade-marks Journal approximately five (5) weeks after it is approved.

Within two months of being advertised, others can oppose the application, which will then be removed from the normal processing cycle until the opposition has been resolved.

At this stage, you will not be notified unless your application is opposed by one or more parties. In this affirmative, the Trade-marks Opposition Board (TMOB) will notify you in writing.
Should the application be opposed after being published in the Trade-marks Journal, the Trade-marks Opposition Board (TMOB) will forward a copy of the Statement of Opposition. Should you wish to contest the opposition, you will have one month to serve and file a counter statement. Both parties will, in turn, have an opportunity to file affidavit evidence and written arguments, as well as to make submissions at an oral hearing. If the opposition is withdrawn or is unsuccessful, your application will proceed to allowance.

An opposition is a complex adversarial proceeding. Most proceedings are resolved during the course of the opposition, but a complete opposition may last more than two (2) years.
If there is no opposition, or if an opposition has been decided in your favour, the application will be allowed and the Office of the Registrar will not consider any further challenges. You will receive a Notice of Allowance and asked to pay the prescribed registration fee. If you do not respond to the Notice of Allowance in the indicated time, abandonment steps may be taken. If the application has been based on “proposed use,” you may request an extension of time until your trade-mark is actually in use. There is a fee per extension.

If the application was not opposed, the Notice of Allowance should be mailed three (3) months after the application appears in the Trade-marks Journal.
You must send in the registration fee and, if the application was based on “proposed use,” a declaration stating that the trade-mark is being used. Your trade-mark now moves from “Pending” status and becomes a “Registered trade-mark”.

The official Certificate of Registration will be mailed between three (3) to four (4) weeks after payment is received.

The length of time to register a trade-mark varies. If the application is filed correctly, approved without changes, and is not opposed, you should receive a Notice of Allowance approximately eighteen (18) to twenty four (24) months after filing. After submitting the registration fee and declaration of use (for trade-marks applications based on “proposed use”), your trade-mark should be registered about four (4) weeks later.

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