Canada's Trademark System

The filing of a trademark application may at first seem like a simple process, but when the application is assigned to an examiner, typically within seven months of filing the application, it can become apparent how difficult the trademark process can be.

When an examiner receives a trademark application they are reviewing it to ensure that it is registrable pursuant to the requirements of the Trademarks Act. This includes ensuring that:

1. the contents of the application comply with the requirements of the Trademarks Act, the most difficult compliance issue being that the goods and services are described in ordinary commercial terms;
2. the trademark is not prohibited from being registered, such as obscene words, words that clearly describe or misdescribe the goods or services associated with the trademark, words or symbols that are confusing with Official Marks, etc.;
3. the trademark is not confusingly similar to another registered trademark; and
4. the trademark distinguishes the associated goods and services from others in a similar industry.

It is not uncommon to receive an examiner’s report citing concerns about one or more of the above. In order to respond to examiner’s reports it is important to understand the state of the registrar and applicable case law. Our Intellectual Property Team, as members of the Intellectual Property Institute of Canada, are consistently apprised of changes to the Trademarks Act and relevant case law decisions.

Once the examiner is satisfied that the trademark is registrable he will approve it for publication in the Trademarks Journal where the public will have a period of two months to oppose the registration of the trademark. If the trademark is opposed, there are strict timelines and documents that need to be filed in order to counter any such opposition.

When the opposition period has passed, the examiner will allow the trademark to be registered. This will occur for a trademark that is in use upon paying the filing fee. For trademarks that are filed on a proposed use basis, the registration will be based on the filing of the Declaration of Use and the filing fee.