Canada Trademark Lawyers and Agents

We offer the following information regarding trademark applications in Canada in response to questions frequently asked by our clients:

Are there any restrictions on choosing a trademark?

The trademarks office will not register a trademark that could be confused with a registered trademark or with a trademark in another application having an earlier effective filing date. The application with the earliest date, either the effective filing date or the date of first use, has priority. In addition, the trademark must not be:

  • Clearly descriptive of the goods or services it identifies, unless the trademark has been extensively used
  • The name of the goods or services
  • Nothing more than a surname, unless after a period of extensive use
  • Various flags, coats of arms and marks that are confusing with marks adopted by public authorities.

It is highly advisable to consult a trademark agent before deciding on a trademark.

What makes a strong or weak trademark?

The strength of a trademark is related to a factor called "distinctiveness." A trademark is not very distinctive if it is descriptive of the goods or services, a surname, initials or constitutes words commonly used in conjunction with the goods or services. The most distinctive type of trademark is an arbitrary word without meaning. Trademarks become strongest after extensive usage.

How do I avoid adopting a trademark which is confusing with another trademark?

The best way to try to avoid conflicts with earlier trademarks is to have a trademark search done. An experienced registered trademark agent can offer preliminary advice before the search is conducted.

How is a trademark registered?

An application is filed by the trademark agent with the Trademarks Office. After the application is filed, the trademarks office sends a filing notice which merely acknowledges receipt of the application and gives a filing date and an application number. A few months later, the application is reviewed by an examiner who conducts a search for existing trademarks which may prove confusing if the application is approved. If a confusing trademark is not found, and there are no other objections, then the trademark is approved. If objections are made, a period of time, usually six months, is given to the applicant to respond. Often, an experienced trademark agent can overcome objections by presenting arguments in favour of registration of the trademark.

When can a trademark application be filed?

An application may be filed either before or after use of a trademark starts. An application typically takes a minimum of one year to be approved. Trademark owners should therefore file applications for proposed trademarks, and perhaps a few alternatives, a year or more before they plan on using the trademarks.

What does "use" of a trademark mean?

A trademark is used on goods when it appears on the goods themselves or their packaging or labelling. A trademark which appears only in advertisements for the goods, or on the goods during an isolated sale or a free distribution of the goods, is not considered "used" for this purpose. A trademark is used on services when it appears in advertisements or promotional material for the services and the services are actually available at that time.

How do you protect a trademark in other countries?

Generally a separate trademark application is required in each country where protection is desired. Canadian trademark owners should seriously consider registration of their trademarks in the United States. Otherwise, later expansion into the United States may be prohibited, or a change of trademark required, if the trademark is later found to be unavailable there.

If registration in the United States is essential or desirable, now or in the future, then it may be advisable to do a United States trademark search as well as a Canadian search. It is generally more difficult to find an available trademark in the United States. Canadian clients should contact our firm for more information regarding both Canadian and U.S. trademark filings and trademarks applications in other countries.

Contact Our Vancouver Trademark Application Lawyers and Agents

For more information or to schedule an appointment with our Canada trademark lawyers and agents, call 778-724-1699 or contact us online for a prompt response.

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