2021.4.28

How to Trademark a Name in Canada

Written by Kit Jenkin

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Are you just starting a new business venture in Canada? Then you’ll want to take advantage of the benefits of trademarking. Trademarking helps you to protect your brand and business from imitation and intellectual property theft.

Whether you’re starting a new business or you’ve been operating one for years, you’ll want to get ahead of the game by trademarking as many things about your brand as possible. And where better to start than your business name? 

Keep reading to see how to trademark a name in Canada.

What is a trademark?

A trademark gives you exclusive legal rights to use the item you are trademarking. This could include a word, phrase, design, or business name. You can trademark almost anything associated with your brand so long as the thing being trademarked is distinctive.

For example, you can’t trademark commonly-used industry terms because this would prevent other people in your industry from describing their products and services without violating your trademark. 

You can, however, trademark a lot of other items such as:

  • Logos
  • Business names (e.g., Epos Now)
  • Product names (e.g., Apple Watch)
  • Unique service (e.g., FedEx)
  • Slogans (e.g., Just Do It)
  • Tastes
  • Textures
  • Moving images
  • Modes of packaging
  • Holograms
  • Sounds
  • Three-dimensional shapes
  • Any combination of the above or other categories

Trademarking a word or business name gives you legal protections. If your name isn’t trademarked, it may be open to imitation or theft. A competitor could imitate your products and services and then take you to court for the rights to your brand.

A trademark will give you:

  • Exclusive rights: When you register a trademark, you have exclusive rights to use that design, name, word(s), etc, to sell your products and services.
  • Proof of ownership: Every registered trademark comes with a certificate for proof of ownership.
  • Protection against imitation and misuse: A trademark keeps others from using your intellectual property for commercial purposes.
  • The ability to flag a trademark infringement: If your trademark is violated, you can take legal action against the offending party.

Madrid System and trademarks outside of Canada

Canada has joined the Madrid System for trademarks. This means that if you register for a trademark in countries that follow the protocol, you won’t need to register in Canada specifically.

Do your trademark research

Once you’ve chosen a name to trademark, you can begin researching other trademarks to see if the process will be worth it. The things you trademark need to be distinctive and thus available for registration. 

A good place to start your search will be the Canadian Trademarks Database. This is a database of all the registered trademarks in the country, so you can see what else is out there. 

You may also want to check business registries and unregistered local businesses. This will give you an idea of whether there are competitors who could make claims against you in the future. Prior use in the marketplace can be used to block your application for trademark or could expose your business to claims of infringement. 

You may also want to consult the Canadian Intellectual Property Office’s Guide to Trademarks for any information relevant to your application, as well as the Good and Services Manual to search for acceptable goods and services terms for trademark applications.

File a trademark with the Canadian Intellectual Property Office

Once you’ve completed your research, you need to start putting your application together. You can do it on your own or you can hire a trademark agent to handle your file. You can also submit your application online or through the mail. 

A trademark application must contain the following to receive a filing date and application number:

  • An implicit or explicit indication that a registration for a trademark is being sought
  • Your name and contact information
  • A representation or description of the trademark (this could include a written description, your business name, a drawing, etc)
  • The description of the goods or services your trademark is associated with
  • The application fee

How your application is processed

Once you have submitted your application, it will pass through a series of steps to ensure it is dealt with promptly and fairly. 

Formalities

If your application meets the basic requirements, you will receive a filing date and application number, and your application will be logged in the Canadian Trademarks Database. You should receive confirmation of this within 7-20 business days of submitting. 

Examination

A trademark examiner will review your application and determine whether the trademark will appear in Trademarks Journal. 

Your application may raise some questions. If it does, the examiner will let you know, and you will be able to respond. If your answers are unsatisfactory, you'll get a letter from the examiner explaining why your application was rejected. 

Publication

If your application is successful, your trademark will be published in Trademarks Journal, which is published weekly on the CIPO website.

Opposition

After your trademark is published, other people will have a window of two months to challenge it. This is done through a statement of opposition. If your application is opposed, you may be required to provide evidence or written arguments in your defence. 

If the opposition is unsuccessful, your application will move forward. If the opposition is successful, your application may be refused either in full or in part. 

Amending your application

After you file your application for the trademark, you may need to amend it for a variety of reasons. You can make amendments to your application online if you have already filed a trademark or certification mark application and have a CIPO filing receipt. However, some changes to your application are not allowed after it’s been filed.

Fees

There may be several different fees you have to pay during your trademark registration.

The main fee for the application for the registration of a trademark is $336.00 CAD. Each additional class of goods or services to which the application relates will require a further $102.00 CAD. 

If you’re using an unorthodox means of submitting your application, you’ll need to pay a fee of $438.00 CAD.

You’ll also need to pay fees for a number of different actions, such as:

  • Submitting a statement of opposition to a trademark
  • Requesting a renewal of a trademark
  • Requesting a certificate of registration
  • Requesting copies of your certificate of registration

Check out the CIPO’s full list of fees to know exactly what you’ll be paying for.

Waiting for your trademark

The process of registering a trademark can take a long time. The CIPO can often take around 2 years for a trademark to be fully registered. 

What else do I need to start a business?

Sorting out your trademarks is just one of the many things you need to do to start your business. Another big part is choosing the technology you’ll use to get the job done.

If you’ve just finished registering your trademark for your retail or hospitality business, you may want to upgrade your point of sale system. Point of sale systems are vital for managing tasks, inventory, staff training, and more. 

Epos Now offers POS systems trusted by businesses all over the world. With our products and services, you can:

  • Accept all payment types
  • Create custom reports to track performance
  • Integrate with dozens of apps
  • Keep track of stock and automate purchase orders

Contact Epos Now to learn more about our point of sale solutions.

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