TRADEMARK APPLICATION FILING IN
Canada

The Canadian Intellectual Property Office (CIPO) is responsible for overseeing trademark registrations within Canada. The CIPO is committed to uphold the highest standards of excellence and precision in its operations by offering several resources for small businesses, like marketing their idea, strategy building in Intellectual Property etc. Canada operates on a first-to-use basis when it comes to trademark registration, and all trademarks must comply with Canadian trademark laws. Trademarks in Canada are governed by the Trademarks Act (RSC 1985, c. T-13), which provides legal protection to distinctive marks, symbols, names, etc., used to create a distinction between goods/services of one party from another.

The trademark registration before the Canadian Intellectual Property Office (CIPO) can be filed either through the online portal or via offline mode.

Multiple-class trademark applications are allowed by the Canadian Intellectual Property Office (CIPO).

The requirements for filing a trademark application are as follows:

• Name, nationality, and address of the applicant;
• Mark representation (logo/device/word etc.);
• Descriptions of goods and/or services;
• Certified priority document*;

*If priority is being claimed, a Certified Priority Document must be submitted on the request of the Registrar.

The process of registering a trademark in Canada begins with the submission of the application before the Canadian Intellectual Property Office (CIPO). Once the TM application is filed, the application will be given a number, and the application will be added to the formal Canadian trademarks database. Thereafter, the application undergoes a formal examination, where examiners assess the trademark's eligibility for advertisement in the Trademark Journal. If any issues or discrepancies are identified during the evaluation, the CIPO will notify the applicant and provide a six-month time to reply to the issued office action/examination report. If no issues are found, or once corrections are made, the application moves forward, and the trademark is then published in the Canadian Trademarks Journal, initiating a two-month opposition period. During this time, third parties have the opportunity to raise objection/opposition to the application.

If no opposition is filed within said timeline, or if opposition is resolved in favour of the applicant, the trademark is officially registered, and a registration certificate is issued.

The opposition proceedings begin when an opponent files a notice of opposition along with grounds of opposition. The applicant will receive this notice, and the CIPO will assess its admissibility. The applicant will be given a two-month period to file the counter reply. During this time, the applicant has the option to engage with the opponent to explore the possibility of an amicable settlement. If a resolution cannot be reached, each party will be given a four-month time frame to submit their evidence. Later, a hearing will be scheduled on the request of either party for cross-examination. The Registrar will then make a decision of whether to accept or reject the application. The applicant has the right to challenge the registrar’s decision by filing an appeal with the Federal Court.

A trademark registration in the CIPO is valid for a period of ten years. The trademark must be renewed before the end of the current term to maintain protection for an additional ten years.

However, if the renewal is not submitted on time, it can still be processed within six months after the expiration date with a surcharge.

A registered trademark must be actively used within three years of its registration. If the trademark is not used continuously during this period, it may be subject to cancellation following a request from a third party.

The trademark registration in Canada normally takes between twelve to eighteen months in straightforward cases.

According to WIPO's 2024 figures, approximately 732,915 trademark applications are in force in Canada. In addition, Canada ranks 21st in the world for trademark filings. Canada also ranked highly on the Global Innovation Index (GII) 2023. It is also ranked among the top 25 innovation leaders in the GII. According to the Global Innovation Index, 2024 Statistics, Canada ranks 14th among the 133 economies. Other major countries, such as the United States, China, and the United Kingdom, also file trademark applications in Canada.