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A GUIDE TO TRADE-MARKS
June 2005
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A GUIDE TO TRADE-MARKS
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This publication is available upon request in multiple formats. Contact the Client Service Centre at the
numbers listed below.
For further information or to obtain additional copies of this publication, please contact:
Client Service Centre
Canadian Intellectual Property Office
Industry Canada
Place du Portage I
Room C-229, 2nd Floor
50 Victoria Street
Gatineau QC K1A 0C9
Tel.: (819) 997-1936
Fax: (819) 953-7620
E-mail: [email protected]
This publication is also available electronically at www.cipo.gc.ca
Permission to Reproduce
Except as otherwise specifically noted, the information in this publication may be reproduced, in part
or in whole and by any means, without charge or further permission from the Canadian
Intellectual Property Office (CIPO), provided that due diligence is exercised in ensuring the accuracy
of the information reproduced, that CIPO is identified as the source institution, and that the reproduc-
tion is not represented as an official version of the information reproduced, nor as having been made
in affiliation with, or with the endorsement of, CIPO.
For permission to reproduce the information in this publication for commercial redistribution, please
e-mail: copyright.droitdauteur.pwgsc.gc.ca
Cat. No. Iu71-4/5-2005E
ISBN 0-662-40946-9
11073E
Aussi offert en franais sous le titreLe guide des marques de commerce.
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INTRODUCTION
Your identity in the marketplace 1
Purpose of this guide 1
The Trade-marks Office 1
Visit CIPOs Web site 1
THE BASICS
What is a trade-mark? 2
Other forms of intellectual property 2
Trade name vs. trade-mark 2
Registered trade-mark vs.
unregistered trade-mark 3
Trade-mark agents 3
Who can register a trade-mark? 3
How do I register my trade-mark? 4
How much does it cost? 4
Five-step examination process 4
How long does registration last? 4
Foreign registration 4
MAKING SURE YOUR TRADE-MARKCAN BE REGISTERED
Names and surnames 5
Clearly descriptive 5
Deceptively misdescriptive 5
Place of origin 5
Disclaimers 5
Words in other languages 6
Causing confusion 6
Prohibited marks 6
Further prohibitions 6
Summary: What trade-marks can you register? 7
THE TRADE-MARK REGISTRATION
PROCESS
The preliminary search 8
Application 8
Foreign applicants 9
Filing date 9
Search and research 9
Examination 10
Disclaimers 10
Abandonment 10
Pre-publication search 10
Advertisement 10
Opposition 10
Allowance and registration 10
OTHER PROCEDURES
Expungement of a trade-mark registration 11
Assignment 11
Marking requirements 11
Policing your trade-mark 12
FOR MORE INFORMATION 13
FEES 14
APPENDIX A
FREQUENTLY ASKED QUESTIONS 16
APPENDIX B
FORMAT OF THE APPLICATION 18
APPENDIX C
YOUR TRADE-MARK APPLICATION 21
GLOSSARY 23
TABLE
O
F
CO
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TEN
TS
TABLE OF CONTENTS
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IN
TRO
DUCTIO
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Your identity in themarketplace
Success in the business worlddepends largely on the messageyou convey and the image youproject. This was the case 50years ago and is even more truein the competitive globalmarketplace of today. You mayhave an excellent product orservice to offer, but if peoplecant pick you out easily in thecrowd, youll probably be over-
looked in favour of a firm with astronger presence.
Its no coincidence that certainbrand names that dominated theNorth American market in the1920s still are leaders today. Thepublic gravitates towardsfamiliar names and symbols thathave become associated withquality and reliability. Thatswhy companies spend millionsof dollars nurturing their corpo-rate images. They may research,
design, market and protect aname, logo or package design asmuch as the physical productitself.
A key way of protecting yourcorporate identity is through aregistered trade-mark. Regis-tration of your trade-mark islegal title to intellectual propertyin much the same way as a deedis title to a piece of real estate. Itverifies the exclusive right youhave established through use of a
word, symbol, style or combina-tion of these (a more completedefinition follows under theheading What is atrade-mark?). Whether you arejust starting out on a businessventure or have been in the fieldfor a long time, it pays to knowabout trade-marks. Its part ofworking strategically in a
fast-paced world.
Purpose of this guide
In this booklet, we will look atwhat trade-marks are, how theycan benefit you and how toregister one. With a basicknowledge of the trade-markconcept and process, you cantake steps to protect your intel-lectual property and avoidinfringing the rights of others.This may help you steer clear ofcostly and time-consuming legalbattles.
Keep in mind that this bookletoffers general information onlyand does not cover all thecomplex issues that may arisethrough the registration process.This guide is not a substitute foran experienced trade-mark agent,nor does it provide authoritativedefinitions and explanations, forwhich the reader is referred to
the Trade-marks Act, theTrade-marks Regulations (1996)and decisions of the Trade-marksOpposition Board and the courts.However, even if you are hiringa trade-mark agent, this guidecan help you become a well-informed client.
Consult the Act, the Trade-marksOffice or a trade-mark agent formore detailed information.
The Trade-marks Office
The federal agency responsiblefor registering trade-marks inCanada is the Trade-marksOffice, directed by the Registrarof Trade-marks.
The Trade-marks Office is partof a larger agency called theCanadian Intellectual PropertyOffice (CIPO), which is part ofIndustry Canada. CIPO isresponsible for other forms ofintellectual property as well:namely, patents, copyrights,industrial designs and integratedcircuit topographies.
The main functions of the Trade-marks Office are to:
I receive and examine applica-tions for trade-mark registra-tion and grant registrations toqualifying applicants;
I record and index trade-marks;
I approve and recordassignments of trade-marks
I maintain an electronicinventory of trade-markregistrations and pendingmarks and a search room ofthese records for public use;
I provide general informationto the public about the trade-mark registration process;
I publish the Trade-marksJournal; and
I maintain a list of trade-markagents.
Visit CIPOs Web site
CIPOs Web site includes usefulinformation about its productlines, services and legislativechanges. The five intellectualproperty guides are available, asare interactive tools that explainintellectual property in an
INTRODUCTION
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enjoyable way. You may visit ourWeb site at the followingaddress: www.cipo.gc.ca
Find out more on how to fill andsubmit your trade-mark applica-tion on-line (see page 9 for moredetails).
What is a trade-mark?
A trade-mark is a word, a sym-bol or a design (or a combinationof these features) used to distin-
guish the wares or services ofone person or organization fromthose of others in the market-place. Trade-marks come torepresent not only actual waresand services, but the reputationof the producer. As such, theyare considered valuable intellec-tual property. A registeredtrade-mark can be protectedthrough legal proceedings frommisuse and imitation.
There are three categories of
trade-marks:
1 Ordinary marks are words orsymbols (or a combination ofthese features) that distinguishthe wares or services of aspecific firm or individual.Suppose you opened a courierbusiness which you calledGiddy-up. You could regis-ter the words as a trade-mark(assuming all legal require-ments were met) for theservice you offer.
2 Certification marks identifywares or services which meeta defined standard. They areowned by one person butlicensed to others to identifywares or services which meeta defined standard. Examplesare: the Woolmark designowned by WoolmarkAmericas, Ltd., for use on
clothing and other wares andthe logo of the Association ofProfessional Engineers.
3Distinguishing guise identifiesthe shaping of wares or theircontainers, or is a mode ofwrapping or packaging wares.If you manufactured candymoulded to look like butterflies, you might want to regis-ter the butterfly shape as atrade-mark under distinguish-ing guise.
Other forms ofintellectual property
People occasionally confusetrade-marks with copyright,industrial designs, patents andintegrated circuit topographies.These are rights granted forintellectual creativity and arealso forms of intellectualproperty.
I Patents cover new inventions
(process, machine, manufac-ture, composition of matter),or any new and usefulimprovement of an existinginvention.
I Copyrights provide protec-tion for literary, artistic,dramatic or musical works(including computerprogams), and three othersubject-matter known as:performance, sound recording
and communication signal.
I Industrial designs are thevisual features of shape,configuration, pattern orornament (or any combinationof these features) applied to afinished article of manufac-ture.
I Integrated circuit topogra-phies refer to the three-dimensional configuration ofthe electronic circuitsembodied in integrated circuitproducts or layout designs.
Trade name vs.trade-mark
A trade name is the name underwhich you conduct your busi-ness, whether it be your own
name, or the name of a corpora-tion or a partnership or a nameadopted for a segment of thatbusiness, i.e., a division of acompany. The trade name can beregistered under the Trade-marksActonly if it is also used as atrade-mark, that is, used toidentify wares or services.
For instance, lets say you ownan ice cream business and yourcompany is called A.B.C. Ltd.:
Example 1: People know yourice cream under the name A.B.C.because you use it as a trade-mark on or in association withyour ice cream. You can, there-fore, register A.B.C. as atrade-mark.
Example 2: People know yourice cream under the word youhave promoted for example,Northpole. Even though theofficial name of your company is
A.B.C. Ltd., no one associates itwith your wares. Therefore,A.B.C. cannot be considered atrade-mark unless you begin touse it as one.
In certain circumstances, atrade-mark registration may bedeclared invalid because of the
THE BASICS
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prior use in Canada of a tradename which is similar to theregistered mark. Ideally, youshould conduct a search ofexisting trade names before fil-ing a trade-mark application. Todo this, you can consult a varietyof sources, including theNUANS (Newly UpdatedAutomatic Name Search) data-base. A search of trade names orcompany names appearing intelephone directories from citiesacross Canada is also appropri-ate. To ensure a thorough search,it is best to hire a trade-markagent to do the job.
Registered trade-mark vs.unregistered trade-mark
A registered trade-mark is onethat is entered on the Trade-marksRegister. You are not required toregister your trade-mark usinga mark for a certain length of timecan establish your ownership
through Common Law but it ishighly recommended.
You must, however, apply forregistration of a mark forprecious metals. Your filingreceipt is necessary if your goodsmust pass through customs.
Registration of your trade-markgives you the exclusive right touse the mark across Canada for15 years, renewable every 15
years thereafter. If you wish toapply for a trade-mark in othercountries, you must apply to thecountry in which you seek regis-tration.
Registration isprima facieevidence of your ownership.In a dispute, the registered ownerdoes not have to prove
ownership; the onus is on thechallenger. Use of an unregis-tered trade-mark can lead to alengthy, expensive legal disputeover who has the right to use it.
Keep in mind also that a regis-tered trade-mark is a valuableasset for business expansionthrough licensing franchises.Note as well that if you fail touse the mark for an extendedperiod, your registration maybe cancelled.
Consider this scenario: For thepast five years youve beenoperating a highly successful icecream emporium under the wordNorthpole in your home townin Nova Scotia. Youve neverheard of another Northpole andyou have never bothered withtrade-mark registration.Meanwhile, an Ontario firm hasregistered the trade-markNorthpole to identify its grow-
ing chain of spaghetti diners andhome brand tomato sauce. Whileconducting research for aMaritime expansion plan, theOntario firm discovers your storeand serves you with a lawsuit.Depending on the facts estab-lished with the Court, this mayresult in a court order preventingyou from using the wordNorthpole. This developmentcouldnt come at a worse time,since you were just planning to
expand your own business. Thesituation could have beenavoided if you had solidifiedyour clear rights to the trade-mark through registration.
Trade-mark agents
Preparing a trade-mark applica-tion and following through on it
can be a complex task, particu-larly if a third party challengesyour right to the mark. You mayfile on your own, but it is highlyrecommended that you hire atrade-mark agent to do so onyour behalf.
In order to become a trade-markagent, a Canadian resident musthave worked in the field of trade-marks for at least 24 months, andhave passed the qualifyingexamination.
A resident of Canada who is abarrister or solicitor, or a notaryin the Province of Quebec, maybecome a trade-mark agent bypassing the qualifying examina-tion or working in the area oftrade-mark law for at least 24months.
An experienced, competenttrade-mark agent who is well-briefed can save you problems
caused by such obstacles as apoorly-prepared application orinadequate research. If youintend to register marks in othercountries, the use of a trade-markagent is strongly recommended.
You can find a list of trade-markagents on CIPOs Web site.However, the Trade-marksOffice cannot recommend anyparticular agent to you. Yourlocal telephone directory is
another source of agents names.
Once youve appointed an agent,the Trade-marks Office willcorrespond with no one elseabout your application. You may,however, change agents at anytime.
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Who can register atrade-mark?
Companies, individuals, partner-ships, trade unions and lawfulassociations may obtainregistration of their marks ofidentification for wares orservices, provided they meet therequirements of the Trade-marksActand Regulations.
How do I register mytrade-mark?
You can register a trade-markelectronically by filing an appli-cation for registration on-linewith the Trade-marks Office inGatineau, Quebec. Your applica-tion then goes through a stringentexamination process to makesure that it meets all requirementsof the Trade-marks Act. Keep inmind that in most instancesyour trade-mark must be used inCanada before it can be regis-
tered. While your applicationmay be based on proposed use,you must put your trade-markinto use before registrationcan occur.
In the following pages, wewill outline the steps towardsregistration.
How much does it cost?
The basic federal government
costs are:
An application for the registra-tion of a trade-mark:(a) $250 for each trade-mark
applied for (non-refundable)where the application and feeare submitted on-line to theOffice of the Registrar of
Trade-marks, via theCanadian IntellectualProperty Web site.
(b) $300 (non-refundable) in anyother case.
If your application is successful,there is a $200 fee for theissuance of a certificate ofregistration.
These costs do not take intoaccount the fees of an agent, ifyou are using one.
Five-step examinationprocess
When the Trade-marks Officereceives your application, it doesthe following:
1 searches the trade-marksrecords to find any other trade-mark that may come intoconflict with the one youvesubmitted and, if one is found,informs you of it;
2 examines the application forcompliance with the require-ments of the Trade-marks Actand Regulations and informsyou of requirements which arenot met by the application;
3 publishes the application inthe Trade-marks Journalwhich is issued everyWednesday and is available onCIPOs Web site;
4 allows time for opposition(challenges) to the application.
Anyone may, upon payment of$750, file a statement of oppo-sition with the Registrar. Afterconsidering the evidence filedby either or both parties, theRegistrar decides whether torefuse your application orreject the opposition. Theparties are notified of the
decision and reasons why;5 if no one files an opposition to
your application, the mark isallowed. Upon payment of the$200 registration fee and thefiling of a declaration of use inthe case of a proposed use ofthe trade-mark application,mark is registered.
How long doesregistration last?
Your registration is valid for 15years thereafter upon the pay-ment of $350(a) where the request and fee are
submitted on-line to theOffice of the Registrar ofTrade-marks, via theCanadian IntellectualProperty Office Web site;
(b) $400 in any other case.
Note, however, that yourregistration may be the subject ofa section 45 proceeding before
the Trade-marks Office or anexpungement proceeding beforethe Federal Court of Canada(see Expungement of a trade-mark registration on page 11).
Foreign registration
Registering your trade-mark withthe Trade-marks Office protectsyour rights in Canada only. Ifyou are selling wares or servicesin other countries, you should
consider registration in each ofthose countries.
Contact a trade-mark agent orthe embassy of the country inquestion for information onforeign registration.
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Therefore, these words are stillpart of the trade-mark, but theapplicant is not claiming exclu-sive rights for these specificwords.
Words in other languages
Words that constitute the nameof the wares or services inanother language such asgelato, Italian for ice cream;anorak, Inuktitut for parka; orWurst, German for sausage cannot be registered.
Causing confusion
Beware of words, symbols,sounds and ideas that suggestsomeone elses trade-mark. If itis confusingly similar to a regis-tered trade-mark or a pendingmark, it will be refused. Thisprohibition makes sense whenyou recall that the whole point ofregistering a trade-mark is to
protect your corporate identityfrom imitation or confusion withothers. Trade-mark examinerstake into account various factorswhen determining whethertrade-marks are confusing. Forexample, they determine:
A whether the trade-marks lookor sound alike and whetherthey suggest similar ideas;and
B whether they are used to
market similar wares orservices.
Lets go back to the example ofNorthpole Ice Cream. Supposeanother company was manufac-turing and selling frozen waterproducts under the registeredtrade-mark Southpole. Peoplemight easily conclude that
Northpole and Southpoleproducts are manufactured andsold by the same company. Theymight expect the trade-marks tobe owned by the same entity.Hence your application to regis-ter Northpole might be turneddown on the grounds of causingconfusion with the registeredmark Southpole owned byanother company.
Other hypothetical examples ofconfusing trade-marks would be:King Dog Food vs. King CatFood (two companies, twodifferent product lines, but thesame trade-mark and the samegeneral area pet food); andGlitter mineral water vs.Glittering ginger ale. However,Glitter for mineral water couldprobably coexist as a registeredtrade-mark with Glittering DryCleaners as a registered trade-mark for dry cleaning services,because the wares and services
in this example are quitedifferent.
Prohibited marks
Subsection 9(1) of the Trade-marks Actlists various kinds ofmarks that are expressly prohi-bited. You may not register atrade-mark that resembles certainofficial symbols unless you havethe consent of the authority inquestion. These official symbols
include:
I official government symbols,e.g., the Canadian flag;
I coats of arms of the RoyalFamily;
I badges and crests of the
Armed Forces and the lettersR.C.M.P.;
I emblems and names of theRed Cross, the Red Crescent,the United Nations;
I armorial bearings, flags andsymbols of other countries;and
I symbols of provinces,municipalities and public
institutions.
These prohibitions are designedto prevent people from cashingin on the prestige and authorityof the above-mentioned institu-tions and misleading the public.
Subsection 9(1) of the Trade-marks Actalso prohibits subjectmatter that is obscene, scanda-lous or immoral. For example,your trade-mark may not includeprofane language, obscene
visuals or racial slurs.
Another prohibition covers theuse of portraits or signatures ofliving persons or persons whohave died within the preceding30 years. For example, using thephoto of an existing rock groupto promote your record storewould be prohibited unless youhad formal consent to do so.
Further prohibitions
A trade-mark will not be regis-tered if it consists of a plantvariety denomination or is amark so nearly resembling aplant variety denomination as tobe likely to be mistaken there-fore, and the application coversthe plant variety or another plantvariety of the same species.
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No:
I Sweet Ice Cream
I Devonshire Ice Cream(unless, in the above cases,you can prove that the trade-mark is distinctive of theapplicant)
I Northpole Ice Cream(if Southpole is a registeredtrade-mark for frozen waterproducts)
I R.C.M.P.s FavoriteIce Cream
Yes:
I Northpole Ice Cream (if it isnot confusing with a registeredor entitled pending trade-mark,i.e., one with an earlier date offiling)
I Venus Ice Cream (mythical,not actual name)
I Scrumptillus Ice Cream(invented, not real adjective)
I True Blue Ice Cream (wordsnot normally associated withice cream)
Note: In all the above cases,
there would be a disclaimer
covering the words ice cream.
Summary: What trade-marks can you register?
A trade-mark will not be regis-tered if it is, in whole or in part, aprotected geographical indicationfor wines or spirits, and the appli-cation covers a wine or spirit notoriginating in the territory
indicated by thegeographical indication.
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The preliminary search
The Trade-marks Office
The Trade-marks Officemaintains a public electronicinventory of all registeredtrade-marks and pending appli-cations in Gatineau, Quebec.Before you apply for trade-markregistration, you or your agentshould conduct a thoroughsearch of the electronic registerand the Trade-marks Database tosee if your trade-mark could beconfused with someone elses.This step is not mandatory, but itis a good idea for two reasons:
1 It is a form of pre-screening.It will help you determinewhether your application has achance for success, or whetherit would be a waste of timeand money to try to register itin its present form. Forexample, your search may turnup a registered trade-markSouthpole for frozen waterproducts, hence you would
have trouble registeringNorthpole for your icecream.
2 A search can help you avoidtrade-mark infringement andpotential lawsuits.
The search room in the ClientService Centre, in Gatineau, isopen to the public, free ofcharge, from 8:30 a.m. to 4:30p.m., Eastern Time, Mondaythrough Friday, except on legalholidays, at:
Canadian Intellectual
Property OfficePlace du Portage I50 Victoria Street2nd FloorGatineau, Quebec K1A 0C9
You may personally visit theTrade-marks Office, or you mayconsult one of the companieslicensed to use the electronicdatabase, or hire a freelance
trade-mark searcher or atrade-mark agent to do theresearch job on your behalf.Freelance searchers andtrade-mark agents are listed inyour local telephone directoryunder Searchers of Recordsand Trade-marks.
The Trade-marks Officeelectronic inventory and theTrade-marks Database containlistings of registered and pendingapplications. The electronicindices cover word marks, slo-gans, numbers, pictures and
combinations of these. As soonas your application is received, ittoo becomes part of the publicrecord and is subject toinspection by the public.
To conduct a proper search, youwill have to check for variouspossible versions of the mark. Inthe case of a word mark, youshould look for all conceivablespellings. For example, if yourtrade-mark is Northpole yousearch for North, Nord
and Pole.Also in the Office records aresamples of crests, badges andofficial symbols that fall into thecategory Prohibited Marks,under subsection 9(1) of theTrade-marks Act. These samplescan help you verify that yourtrade-mark does not fall into aprohibited category.
You should allow at least half aday to conduct your search. Aninformation officer in the Client
Service Centre will be pleased toexplain how to access the elec-tronic register and to provide youwith general information aboutthe Trade-marks ActandRegulations. Remember, theTrade-marks Office cannotconduct the search for you, oradvise you on whether yourmark is registrable. This can only
happen in the examinationprocess for a filed trade-markapplication.
Trade names
Consider also having a search oftrade names done before you goany further. Trade names areoften also used as trade-marks,even if they are not registered assuch. Southpole Inc. may neverhave filed for trade-markregistration, but if the nameSouthpole is known for frozenwater products, the companycould argue ownership of theword as a trade name, as well asa trade-mark. Southpole Inc.could not prevent you from filingyour Northpole application.The Trade-marks Office wouldnot have Southpole on itstrade-mark records, becausetrade names are not registeredwith it.
However, Southpole Inc. couldeasily find out about your appli-cation, either by doing a searchof the Trade-marks Office
records or when your applicationis published in the Trade-marksJournal. It may then challengeyour application during the stagecalled Opposition.
As trade names may be recordedseparately in each provinceunder provincial legislation,there is no complete centralinventory containing all currentnames, although throughNUANS you can access a data-base of registered corporatenames. This search is thereforequite complex and you areadvised to hire a trade-markagent to do the job for you.
Application
The principal document in theregistration process is your appli-cation form. You must file aseparate application for each
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trade-mark you wish to register,although one application maycover both wares and services or
a number of wares or services.You create the form yourselfbased on the sample formatssupplied with this guide. Thereare a total of nine differentsuggested formats, coveringevery kind of application (e.g.ordinary marks, certificationmarks, applications for amend-ment of a registration, etc.). Foryour convenience, the mostcommonly used formats, 1 and 4,annotated with instructions forfilling them out, are included asAppendix B.
Electronic copies of thesuggested formats are avail-able on our Web site in PDF(Portable Document Format).Trade-mark applications mayalso be filed electronically fromour Web site using theTrade-marks Office On-lineElectronic Filing System.
I Format 1 is for applicationsfor ordinary marks based onuse in Canada. This means
you have been using the markfor a certain length of timeand your claim is based onthis fact.
I Format 4 is for applicationsfor ordinary marks based onproposed use in Canada. Thismeans that you state yourintention to use the mark asdescribed in your application.(You must demonstrate usebefore registration can occur.)
You should consider waitinguntil the opposition period isover before commencing useof your mark.
If appropriate, you couldcombine the two formats. Forexample, if youve been offeringa restaurant service under thename Northpole for several
years and now you plan to alsosell Northpole ice cream, yourapplication would be based on
both use for the services andproposed use for the wares.Whichever format you use, youmust specify the trade-mark youare seeking to register. If yourtrade-mark is anything other thana word or words in upper orlower case letters or includesFrench or English punctation,then a drawing of the design isrequired at the time you file theapplication.The formal drawing should:
I
be in black and white; and
I include a description of thecolour(s) if colour is claimedby you in the trade-mark.
For detailed designs, a drawingas large as possible, but notexceeding 22 cm x 35 cm (8.5inches x 14 inches), will allowfor the clearest reproduction.
If you wish, you may use thespecial chart in the Trade-marksRegulations (1996) to indicateyour colours. But note thatincluding colour gives you lessflexibility, as you must thenalways use your trade-mark inthose specified colours. If yousimply present your design inblack and white, you will be freeto use the mark in any colour.Likewise, presenting your wordmark in any style of letteringother than upper or lower caserestricts you. If you wishmaximum flexibility, present theword mark in upper or lower
case and the design in black andwhite.
To sum up, a complete applica-tion includes:
1 the appropriate applicationform filled out by you or youragent;
2 the application fee; and3 a formal drawing where
appropriate.
Foreign applicants
If you are applying forregistration of a trade-mark inCanada, but reside in a countryother than Canada, you mustappoint a representative forservice to whom the Officecorrespondence will be directed.
Filing date
When your application arrives atthe Trade-marks Office, the staffcheck it to make sure it is com-plete. If anything is missing, theywill contact you to ask for docu-ments or information. Once thisprocess is finished, the Officewill acknowledge receipt of acompleted application and assigna filing date, that is, the date thatyour application is officiallyfiled. (Do not confuse this datewith registration.) This filingdate is particularly importantsince it is the date used to assessentitlement to registration at theexamination stage.
After the formal filing, you maymake minor modifications inyour application. Major changes,however, would entail thetrouble and expense of anotherfiling. For example, you maylimit or specify the wares and/orservices made in your initialapplication but you cannotextend your initial identificationof wares and/or services. Toavoid this, you or your agentmust take great care in preparingyour application.
Search and research
Trade-marks Office staff conducta thorough search of the recordsto verify that your trade-markcannot be mistaken for anyoneelses. They will also determinewhether your mark fulfils all thecriteria of the Trade-marks Act,in other words, that it does not9
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fall into any of the categoriesdiscussed in the section,Making sure your trade-mark
can be registered. The resultsare considered by the Trade-marks Examiner assigned toyour case.
Examination
The Examiner studies the dataand decides whether your appli-cation can be accepted. If thereare doubts about your case, theExaminer will notify you of theobjections. You then haveopportunities to respond. If youranswers still fail to satisfy theExaminer, you will receive aletter informing you that yourapplication has been refused andexplaining the reasons why. Inthe event of refusal, you have theright to appeal to the FederalCourt of Canada.
Disclaimers
The Examiner may request thatthe applicant disclaim the rightto the exclusive use, apart fromthe trade-mark, of a portion of
the trade-mark if the appropriatedisclaimer statement has notalready been included in theapplication.
Abandonment
If you fail to prosecute yourapplication (take all the stepsnecessary to complete theprocess), your application maybe considered abandoned. Beforethis happens, you will be notifiedand given an opportunity toremedy the situation within a
specified time period. If you donot respond appropriately, yourapplication will be consideredabandoned and you will have tore-apply with the requisite fee topursue the trade-mark.
Pre-publication search
Lets suppose your application
for the trade-mark Northpolehas been approved for advertise-ment in the Trade-marks
Journal. The Examiner couldfind no grounds to disqualify it.Does that mean registration iscompleted? No. There are stillhurdles to overcome. The Officedoes another search, calledPre-publication Verification, toensure that in the interveningmonths, no one has registered orapplied for registration of atrade-mark that conflicts withyours. The Office will againcorrespond with you if necessaryand seek your comments on anysuch trade-mark.
Advertisement
Suppose the Pre-publicationVerification has not unearthedany new objections forNorthpole. Now your applica-tion is ready for advertisement inthe Trade-marks Journal. Thisjournal, published eachWednesday, contains detailsabout every application whichhas been approved for advertise-ment. When an application is
advertised, it allows members ofthe public an opportunity to raiseobjections to pending applica-tions prior to registration. It isanother means of weeding outtrade-marks that conflict withthose of other owners. TheJournal entry for Northpole isa summary of the information onthe trade-mark and includes yourname, address, file number,filing date, the trade-mark (theword mark, symbols, etc.),whether it is based on use orproposed use, which goods
and services it is used for andany other claims (colour claims,disclaimers, etc.).
Opposition
Any person with valid grounds fordoing so may oppose a trade-markapplication advertised in the
Trade-marks Journal. An opposi-tion must be made within twomonths of the publication date by
either filing a statement of opposi-tion together with a fee of $750, orby requesting an extension of timeto oppose, with a fee of $125. TheTrade-marks Office will dismissan opposition it considers to befrivolous.
If your application is opposed andyou dont already have an agent,you are urged to hire one at thispoint. The same holds true if youwish to oppose someone elsesapplication. Opposition is a com-plex adversarial process, much likea court proceeding, during whichboth parties may file evidence andcounter-arguments, cross-examinethe evidence of the other party andmake representations at an oralhearing. The whole procedure cantake as long as two to four years,sometimes longer.After a finaldecision is rendered, it may beappealed to the Federal Court ofCanada. Because opposition pro-ceedings can absorb so much timeand money, you are advised tochoose your trade-mark agent care-
fully. Seek someone who has aproven expertise in the field.
Allowance andregistration
If there is no opposition, or if anopposition has been decided inyour favour, your application willbe allowed. The Trade-marksOffice will not consider any fur-ther challenges. You will receive aNotice of Allowance and be askedto pay the $200 registration fee. Ifyour application has been based on
proposed use, you will be askedfor a declaration stating you havecommenced use of the trade-mark.The final step, after you have ful-filled these requirements, is for theOffice to issue a Certificate ofRegistration and enter the registra-tion on its records.
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11
O
THER
PRO
CEDURES
OTHER PROCEDURES
Expungement of atrade-mark registration
The registration of a trade-mark
provides the registered owner with
a very valuable right, namely, the
exclusive right to the use through-
out Canada of the trade-mark in
respect of the registered wares
and/or services. However, in order
to keep such a right, the registered
owner must fulfill some responsi-
bilities.
One responsibility is that the regis-
tered owner must pay a renewal
fee every 15 years. Failure to pay
such a fee on time will result in the
expungement of the trade-mark
registration.
Another responsibility of the
owner is to use the trade-mark in
Canada. If the trade-mark is not in
use, then the registration is liable
to be expunged either by the
Registrar or by the Federal Court.
Summary expungement proceed-ings may be instituted by the
Registrar either of his own volition
at any time during the life of the
registration, or at the request of a
third party upon payment of the
prescribed fee, after three years
from the date of the registration
(see section 45 of the Trade-marks
Act). The procedure before the
Registrar begins when the
Registrar issues a notice to the
registered owner asking him to
furnish evidence showing use ofthe trade-mark in Canada or
special circumstances excusing
non-use. The registered owner
must furnish evidence, since
failure to reply to the Registrars
notice will result in the
expungement of the trade-mark
registration.
IMPORTANT The notice willbe issued to the registered owner
and his representative for service
at the addresses shown on the
registration page. Please note that
if you have failed to notify the
Registrar of a change of address,
the Registrar is not responsible for
any correspondence not received
by the registrant or its representa-
tive for service or its agent.
Once the Registrar has received
the evidence, the registered owner
and the requesting party have anopportunity to submit written argu-
ments and to make representations
at an oral hearing. The whole
procedure can take as long as one
and a half to two years. After a
final decision is rendered to either
expunge, amend or maintain the
registration, it may be appealed to
the Federal Court of Canada.
In view of the complicated nature
of section 45 proceedings, the
parties are advised to use theservices of a registered trade-mark
agent.
For more information, refer to
section 45 of the Trade-marks Act,
or call (8l9) 997-7300.
Assignment
A trade-mark is a form of
property. You can sell, bequeath or
otherwise transfer your rights to it
to another party through a transac-
tion called an assignment. Youshould formally notify the Trade-
marks Office of such changes in
ownership so that the Office can
amend its records accordingly.
This is done to avoid ownership
disputes.
There are no prescribed forms fornotifying the Trade-marks Office
of an assignment, but you must
send evidence of the change,
together with the prescribed fee.
Other transactions can affect the
ownership of a trade-mark, for
example a change of name, a
merger, etc.
Marking requirements
Canadas Trade-marks Actdoes
not contain any marking require-
ments. However, trade-mark
owners often indicate their
registration through certain
symbols, namely, R in a circle
(registered), TM (trade-mark), SM
(service mark), MD (marque
dpose) or MC (marque de com-
merce).
Although the Act does not require
the use of these symbols, it is
advisable to use them. The sym-
bols TM, SM or MC may be usedregardless of whether the trade-
mark is registered. The R in a
circle, or MD, on the other hand,
should be used only if the mark is
registered.
Canadas Precious Metals
Marking Actstates that you must
file a trade-mark application for
the trade-mark used on the wares,
if you wish to stamp a quality
mark (e.g. 10K gold) on your
product. The quality mark itself isnot mandatory.
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O
THER
PRO
CEDURES
Policing your trade-mark
One of the functions of the Trade-
marks Office is to prevent anyone
else from registering a mark that is
the same as or confusingly similar
to your mark. It does not, however,
keep an eye out for cases of
infringement. It is your responsi-
bility entirely to monitor the
marketplace and, if you find some-
one using your registered
trade-mark or a mark or a trade
name that is confusing with your
mark, to take legal action.
Someone who infringes on trade-
mark rights may be accountable to
you by way of an injunction, i.e.,
an order to cease the infringing
activity and/or damages.
Preventing imitation by
competitors is not the only
reason to police your mark.
If your business is a smash
success, your mark may be in
danger of becoming a generic
term. Believe it or not, too muchfamiliarity can be a bad thing.
If consumers start saying
Northpole when they mean
any ice cream, your trade-mark
may no longer be distinguishable
from others. Such was the fate of
trade-marks such as Zipper,
Escalator, Cellophane, and
Dry Ice. Who remembers
that the correct terms are slide
fastener and moving staircase?
This is why some companies arevery vigilant about policing their
marks, and preventing improper
use of their trade-marks in any
kind of communication.
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FO
R
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IN
FO
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N
FOR MORE INFORMATION
Information officers at the Trade-marks Office can assist you withquestions about trade-marks.Address your correspondence to:
Trade-marks OfficeCanadian IntellectualProperty OfficeIndustry CanadaPlace du Portage I50 Victoria StreetGatineau, Quebec K1A 0C9
or telephone the Client ServiceCentre at (819) 997-1936between 8:30 a.m. and 4:30 p.m.,Eastern Time, Monday throughFriday, except on statutoryholidays.
To help the Office help you,please refer to your file number(if and when you receive one) inall your written and telephonecommunications. Other usefulreferences to include would be:trade-mark registration numbers
and, in the case of an opposition,the date the relevant trade-markapplication appeared in theTrade-marks Journal, togetherwith the file number of theapplication.
Copies of various documentsreferenced in this guide,including the Trade-marks Actand Trade-marks Regulations,the Trade-marks ExaminationManual and the Trade-marksWares and Services Manual, areavailable from our Web site, freeof charge. For a fee, paper copiesmay be obtained by contacting:
Canadian GovernmentPublishingPublic Works andGovernment ServicesCanadaOttawa, Ontario K1A 0S9
Tel.: (819) 956-4802Fax: (819) 994-1498
Mail intended for the Office ofthe Registrar of Trade-marks anddelivered:
1 during business hours toCIPO Headquarters inGatineau, will be accorded thedate of receipt that day;
2during business hours toIndustry Canada Headquartersor to one of its regionaloffices, will be accorded thedate of receipt in that office*;
3 at any time by facsimiletransmission (all mail) or theInternet (new applicationsonly), will be considered to bereceived on the day that it istransmitted if received beforemidnight, local time, at theOffice of the Registrar ofTrade-marks in Gatineau*;
4 through Canada PostCorporations (CPC)Registered Mail Service, willbe considered to be receivedon the date stamped on the
envelope by CPC*.
*Only if it is a day on whichCIPO Headquarters in Gatineauis open, if not, it will beconsidered to be received on thenext working day.
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14
TARIFF
O
F
FEES
The following table presents allthe possible application, registra-tion and service fees.
Please note that payments maybe made by credit card (VISA,MasterCard or AmericanExpress), deposit account, postalmoney order or cheque payablein Canadian dollars to theReceiver General for Canada. Donot add federal and provincialtaxes.
PART IOn the filing of:
1 An application for registrationof a trade-mark,(a) where the application and feeare submitted on-line to theOffice of the Registrar ofTrade-Marks, via CIPOs
Web site...............................$250
(b) in any other case............$300
2 A statement of opposition
pursuant to subsection 38(1)of the Act.............................$750
3 An application to amendthe registration of a trade-markby extending the statementof wares or services in respectof which the trade-mark isregistered.............................$450
4 (Repealed, SOR/2003-209,
s. 4)
5 Any other application toamend the register, other than
corrections of clerical errors andamendments of the name,address or description of therepresentative for service inCanada, for eachtrade-mark.............................$50
6 A request to recognize thetransfer of one or moretrade-marks, for each
trade-mark...........................$1007 A request to renew theregistration of one or more trade-marks,(a) where the request and fee aresubmitted on-line to the Office ofthe Registrar of Trade-Marks, viaCIPOs Web site...................$350
(b) in any other case.............$400
8 A request to send one or morenotices pursuant to section 44 or45 of the Act, for eachnotice....................................$400
9 An application for anextension of time pursuant tosubsection 47(1) or (2) of theAct, for each act...................$125
10 Each certified copy of aregistration referred to insubsection 31(1) of theAct..........................................$50
11 (Repealed, SOR/2003-209,
s. 6)
12 A request pursuant toparagraph 9(1)(n) or (n.1) of the
Act with respect to one or morebadges, crests, emblems, marksor armorial bearings:for each badge, crest, emblem,mark or armorial bearing......$500
13 A request for thetransmission of documents to theFederal Court of Canadapursuant to subsection 60(1) ofthe Act, for each file.............$17514 A statement of objectionpursuant to subsection 11.13(1)of the Act ..........................$1000
PART IIFor the registration of:
15 A Trade-mark, including,without further fee, the issuanceof a certificate of registration ofthe Trade-mark.....................$200
PART IIIOn the issuance of:
16 A certified copy in paperform of a document:
(a) for each certification........$35
(b) plus, for each page.............$1
17 A certified copy inelectronic form of a document:
(a) for each certification........$35
(b) plus, for each trade-mark towhich the request relates.......$10
18 A copy in paper form of adocument, for each page,(a) where the person requestingmakes the copy using equipmentof the Office of the Registrar ofTrade-marks.......................$0.50(b) where the Office makes thecopy.........................................$118.1 A copy in electronicform of a document:(a) for each request................$10(b) plus, for each trade-mark towhich the request relates.......$10
(c) plus, if the copy is requestedon a physical medium, for eachphysical medium requested inaddition to the first.................$10
PART IVTrade-mark agents:
19 On request, to enter aname on the list of trade-markagents:(a) where the request and fee aresubmitted on-line to the Office ofthe Registrar of Trade-Marks, viaCIPOs Web site............. .....$300(b) in any other case.............$350
20 Examination fee referred toin paragraph 20(2)(b)...........$400
21 Annual registration feereferred to in paragraphs22(1)(a) and (2)(b):(a) where the fee is submitted
TARIFF OF FEES
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TARIFF
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on-line to the Office of theRegistrar of Trade-Marks, via theCanadian Intellectual PropertyOffice Web site.....................$300(b) in any other case.............$350
22 Reinstatement fee referredto in paragraph 23(1)(b).......$200
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16
APPEN
DIX
A
FREQU
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TLY
ASKED
Q
UESTIO
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S
Q1 What is a trade-mark?A A trade-mark is a word,symbol or design, or a combina-tion of these, used to distinguishthe goods or services of oneperson or organization fromthose of others in the market-place.
Q2 Are there different kindsof trade-marks?
A Yes, there are three basictypes. Ordinary marks arewords and/or symbols that distin-guish the goods or services of aspecific firm. Certificationmarks identify goods or serviceswhich meet a standard set by agoverning organization.Distinguishing guise identifiesthe shaping of wares or theircontainers, or a mode of wrap-ping or packaging wares.
Q3 What is the differencebetween trade-marks andother forms of intellectualproperty?
A Trade-marks are only oneform of intellectual property thatcan be protected through federallegislation. The other forms are:patents, for new technologies;copyrights, for literary, artistic,dramatic or musical works, per-formance, sound recording orcommunication signal;
industrial designs, for theshape, pattern, or ornamentationapplied to an industrially pro-duced object; and integratedcircuit topographies, for thethree-dimensional configurationof the electronic circuits embo-died in integrated circuitproducts or layout designs.
Q4 What is the differencebetween a registered and anunregistered trade-mark?
A A registered trade-mark hasbeen approved and entered onthe Trade-marks Register held bythe Trade-marks Office.Registration is proof of owner-ship. An unregistered trade-markmay also be recognized throughCommon Law as the property ofthe owner, depending on the cir-cumstances.
Q5 Why register a trade-mark?
A Registration is direct (primafacie) evidence of exclusiveownership across Canada andhelps ward off potentialinfringers. It enables you to moreeasily protect your rights shouldsomeone challenge them sincethe onus is on the challenger toprove rights in any dispute. The
process of registration, with itsthorough checks for conflictingtrade-marks, will ensure that youare claiming a unique mark, andhelp you avoid infringement ofother parties rights. A registeredtrade-mark is a prerequisite forfranchising a business.
Q6 Is registrationmandatory?
A No, but it is advisable.
Q7 Why hire a trade-markagent?
A Trade-mark registration canbe a complex process; an experi-enced agent can save you timeand money by avoiding pitfallssuch as poorly prepared applica-tions and improper research.
Q8 Who can registera trade-mark?
A Companies, individuals,partnerships, trade unions orlawful associations, providedthey meet the requirements ofthe Trade-marks Act.
Q9 How long is registrationeffective?
A Registration is valid for15 years and is renewable every
15 years afterwards uponpayment of a fee.
Q10 How do I registera trade-mark?
A You must file an applicationwith the Trade-marks Office inGatineau, Quebec. The applica-tion undergoes stringentexamination to ensure it meetsthe requirements of theTrade-marks Act.
Q11 Does registration inCanada protect my rights inother countries?
A No. If your products aresold in other countries, youshould consider applying forforeign registration. Contact atrade-mark agent or the embassyof the country in question to findout about procedures.
Q12 What is the differencebetween a trade-mark and atrade name?
A A trade name is the nameunder which you conduct yourbusiness. It can be registered as atrade-mark, but only if it is usedas such, that is, used to identifywares or services.
APPENDIX A FREQUENTLY ASKED QUESTIONS
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APPEN
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Q13 May I register my ownname as a trade-mark?
ANormally, you may not
register a proper name neitheryours, nor anyone elses as atrade-mark. An exception maybe made if you can demonstratethat the name has become identi-fied in the public mind withcertain wares or services.
Q14 What other kinds ofmarks may not be registered?
A In general, the followingmarks may not be registered:
words that are clearly descriptive(e.g. delicious ice cream),terms that are misleading, wordsthat designate a place of origin(e.g. Atlantic cod), terms orsymbols that are too similar to anexisting trade-mark, and termsand symbols that are expresslyprohibited under the Trade-marks Act. These latter includesymbols (coats of arms, badges,crests, etc.) of national and inter-national organizations and terms
that are considered immoral oroffensive. Other types of markswhich may not be registered areplant variety denominations andprotected geographical indica-tions for wines and spirits.
Q15 What are the steps oftrade-mark registration?
A Trade-mark registrationusually involves:
1) a preliminary search (doneby you or your agent) of
existing trade-marks;
2) an application;
3) an examination of yourapplication by the
Trade-marks Office;
4) publishing of the application
in the Trade-marks Journal;
5) time for opposition
(challenges) to theapplication; and
6) allowance and registration (if
there is no opposition).
Q16 Why is the preliminarysearch important?
A It helps you determinewhether your application has achance for success. It helps youavoid infringing on otherpeoples trade-marks.
Q17 Will the Trade-marksOffice tell me during my
preliminary search if mytrade-mark can be regis-tered?
A No, the Office cannotprovide a judgment at this stage.This can only happen during theexamination process. Officialswill give you general informa-tion about the rules andregulations.
Q18 What do I need toinclude in my application?A 1) the appropriate,
completed applicationform;
2) the application fee; and
3) a drawing of the trade-mark if the application ismade for a word orwords in special form ora design.
Q19 May I allow otherparties to use my registeredtrade-mark?
A Yes. You may sell, bequeathor otherwise transfer your rightsto a trade-mark through aprocess called assignment. Youmay also license rights to yourtrade-mark.
Q20 Will the Trade-marksOffice ensure that my trade-mark is not infringed?
A The Trade-marks Officedoes not act as an enforcementagency. You are responsible formonitoring the marketplace forcases of infringement and takinglegal action, if necessary.
Q21 Should I incorporatemy company?
A The answer to this questiondepends on your companyssituation. Corporations Canada
publishes the Small BusinessGuide to Federal Incorporation
which can help you decide if youshould incorporate federally.You may also choose to incorpo-rate at the provincial level.Please consult the appropriateprovincial governments Website for further details onprovincial incorporation (linksavailable on the CorporationsCanada Web site in the Otherrelated links section).
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APPENDIX B FORMAT OF THE APPLICATION
PLEASE NOTE THAT OUR OFFICEDOES NOT SUPPLY FORMS. IT ISTHE RESPONSIBILITY OF THEAPPLICANTS TO FOLLOW THE
APPROPRIATE FORMAT ANDSTRUCTURE THEIR OWN FORM.
THE FOLLOWING FORMS MAY BEUSED, WHERE APPROPRIATE, FORTHE SUBMISSION OFINFORMATION TO THE REGISTRAROF TRADE-MARKS. THE USE OFTHESE FORMS IS NOTMANDATORY. THE REGISTRARWILL ACCEPT ALTERNATIVEFORMATS, PROVIDED THAT ALLINFORMATION REQUIRED BY THETRADE-MARKS ACT ORREGULATIONS IN THEPARTICULAR CIRCUMSTANCE ISGIVEN.
Instructions for Format 1
(A) (i) In the case of a corporation,
give full name.
(ii) In the case of an individual,
give the surname and at least
one given name. If the indivi-
dual trades under a name other
than his own name, follow his
name by the words trading as
then give the trading name.
(iii) In the case of a partnership,
give the surname and at least
one given name for each partner.Follow these names with either
the words a partnership or the
words trading as and then give
the name under which the
partnership trades.
(B) Every address required to be
furnished shall be a complete
post office address and should
include a street name, number
and a postal code where one
exists.
(C) (i) If the trade-mark is a word or
words not depicted in a specialform, set out the word or words
in upper or lower case letters.
(ii) If the trade-mark is a design,
insert the phrase shown in the
accompanying drawing and
annex the drawing (see
Application section of this
guide) to the form.
(D) If all the specific wares in
association with which the
trade-mark has been used in
Canada, and in respect of which
registration is requested, fall
into a single general class, list
them all here. If such wares fall
into more than one general class,
list here only those falling into
one class. The wares must be
described in ordinary
commercial terms.
(E) Give the earliest date when the
applicant began to use the trade-
mark in Canada in association
with any of the wares listed in
accordance with (D).
(F) List here the specific wares in
accordance with which the
trade-mark has been used in
Canada, and in respect of which
registration is requested, which
fall into a different general class
from that comprising the wares
listed in accordance with note
(D).
(G) Give the earliest date when the
applicant began to use the trade-
mark in Canada in association
with any of the wares listed in
accordance with note (F).(H) If the trade-mark has been used
in Canada in association with
the specific wares falling into
further different general classes,
repeat here the words and in
association with the general
class of wares comprising the
following specific wares...
since... as often as necessary,
listing in each case the specific
wares falling into the different
general class from those com-
prising the previously listed,and giving in each case the
earliest date when the applicant
began to use the trade-mark in
Canada in association with any
of such wares.
(I) If all the specific services in
association with which the
trade-mark has been used in
Canada, and in respect of which
registration is requested, fall into
a single general class, list them
all here. If such services fall into
more than one general class, list
here only those falling into one
general class. The services must
be described in ordinary
commercial terms.
(J) Give the earliest date when the
applicant began to use the
trade-mark in Canada in
association with any of the
services listed in accordance
with note (I).
(K) List here the specific services in
accordance with which the
trade-mark has been used in
Canada, and in respect of which
registration is requested, which
fall into a different general class
from that comprising the
services listed in accordance
with note (I).
(L) Give the earliest date when the
applicant began to use the
trade-mark in Canada in associa-
tion with any of the services
listed in accordance with note
(K).
(M)If the trade-mark has been used
in Canada in association withspecific services falling into
further different general classes,
repeat here the words and in
association with the general
class of services comprising the
following specific services...
since... as often as necessary,
listing in each case the specific
services falling into the different
general class from those
comprising the previously listed,
and giving in each case the
earliest date when the applicantbegan to use the trade-mark in
Canada in association with any
such services.
(N) Insert wares, services or
wares and services as
applicable.
18
APPEN
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APPEN
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APPLICATIO
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Format 1
Application for Registration of a Trade-mark in use in Canada
To: The Registrar of Trade-marks, Gatineau, Canada.
The applicant ___________________________________________ whose full post office address of its
principal office or place of business is_________________________________________________________
_______________________________________________________________________________________
_______________________________________________________________________________________
applies for the registration, in accordance with the provisions of the Trade-marks Act, of the trade-mark
identified below.
The trade-mark is the word(s) (or is shown in the attached drawing)
______________________________________________________________________________________.
The trade-mark has been used in Canada by the applicant in association with all the specific wares listed
hereafter, and the applicant requests registration in respect of such wares. The trade-mark has been so used in
Canada in association with the general class of wares comprising the following specific wares____________
____________________________________ since ______________________________________________
and in association with the general class of wares comprising the following specific wares
________________________________________ since _________________________________________.
The trade-mark has been used in Canada by the applicant in association with all the specific services listed
hereafter, and the applicant requests registration in respect of such services. The trade-mark has been so used
in Canada in association with the general class of services comprising the following specific services
_________________________________________ since ________________________________________,
and in association with the general class of services comprising the following specific services____________
___________________________________ since ______________________________________________.
The applicant is satisfied that he or she is entitled to use the trade-mark in Canada in association with
the _______________________________________________ described above.
(C)
(D)
(E)
(F)
(A)
(B)
(G)
(I) (J)
(L) (M)
(N)
(K)
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APPLICATIO
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Instructions for Format 4(A) (i) In the case of a corporation,
give full name.
(ii) In the case of an individual,
give the surname and at least
one given name. If the indivi-
dual trades under a name other
than his/her own name, follow
his/her name by the words
trading as then give the
trading name.
(iii) In the case of a partnership,
give the surname and at least
one given name for each partner.Follow these names with either
the words a partnership or thewords trading as and then give
the name under which the
partnership trades.
(B) Every address required to be
furnished shall be a complete
post office address and should
include a street name, number
and a postal code where one
exists.
(C) (i) If the trade-mark is a word or
words not depicted in a special
form, set out the word or words
in upper or lower case letters.
(ii) If the trade-mark is a design,
insert the phrase shown in the
accompanying drawing andannex the drawing (see
Application section of this
guide) to the form.
(D) List all specific wares. The
wares should be described in
ordinary commercial terms.
(E) List all specific services. The
services should be described in
ordinary commercial terms.
(F) Insert wares, services or
wares and services as
applicable.
Format 4
Application for Registration of a Proposed Trade-mark
To: The Registrar of Trade-marks, Gatineau, Canada.
The applicant ____________________________________________whose full post office address of its
principal office or place of business is _______________________________________________________
______________________________________________________________________________________
applies for the registration, in accordance with the provisions of the Trade-marks Act, of the trade-mark
identified below.
The trade-mark is the word(s) (or is shown in the attached drawing)
______________________________________________________________________________________.
The applicant, by himself/herself or through a licensee, or by himself/herself and through a licensee, intends
to use the trade-mark in Canada in association with ______________________________ and requests
registration of the trade-mark in respect of such wares.
The applicant, by himself/herself or through a licensee, or by himself/herself and through a licensee, intendsto use the trade-mark in Canada in association with ______________________________ and requests
registration of the trade-mark in respect of such services.
The applicant is satisfied that he/she is entitled to use the trade-mark in Canada in association with the
_______________________ described above.
(B)
(C)
(D)
(E)
(F)
(A)
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APPENDIX C YOUR TRADE-MARK APPLICATION
Some common errors to avoid
Youre ready to file your trade-mark application but first, take some time to go through thefollowing checklist. The following are some very common errors applicants make that result indelays in processing of the application.
Filing fee Remember, each application must be accompanied by(a) $250 for each trade-mark applied for (non-refundable) where theapplication and fee are submitted on-line to the Office of the Registrarof Trade-marks, via the Canadian Intellectual Property Web site;(b) $300 (non-refundable) in any other case.Please note that payments may be made by credit card (VISA, MasterCard orAmerican Express), deposit account, postal money order or cheque payablein Canadian dollars to the Receiver General for Canada. Do not add federal and
provincial taxes.
Wares/services Make sure you include all the wares and/or services with which youintend to use, or have used, your trade-mark since you will not be permitted to extend yourwares and/or services after filing the application. Remember, wares or services that havebeen used should be listed separately from wares or services that are proposed to be used.There is a requirement in the Trade-marks Act, that the wares and/or services applied for bein specific ordinary commercial terms. In other words, your application should state commonnames for the wares and services in a complete and specific way as possible. To assist you inthis, the Wares and Services Manual appears on CIPOs Web site and provides acceptableidentifications of many wares and services pursuant to paragraph 30(a), and also providesguidelines by way of example for identifying those wares and services not listed.
Date of first use in Canada If you have used your trade-mark in Canada in association
with wares and/or services, you must provide the Trade-marks Office with the date of firstuse. Make sure that the date of first use does not fall AFTER the filing date of yourapplication, which is the date your application is received by the Trade-marks Office.If this is the case, you should probably file under proposed use.
Acceptable date of first use You may not be aware that when you do not provide theday and/or month of the date of first use, the Trade-marks Office will assume this meanseither the last day of the month (if you dont provide the day), or the last day of the year(if you havent provided the month). This means, for example, that if you file yourapplication in 2004, and then state that you have used your trade-mark in association withyour wares and/or services since 2004, the Trade-marks Office will assume this means thelast day of 2004. This can render your date of first use unacceptable, since it could fallAFTER your filing date.
Is it a word or is it a design? You must be clear about what you want to register. Is it aword or words not depicted in a special form? If so, simply state The trade-mark is, and setout the word or words in upper or lower case letters. If the trade-mark is a design, state Thetrade-mark is shown in the accompanying drawing, and attach the drawing to theapplication in this space (i.e. with glue or staples). Do not do both, as this could causeconfusion and result in your application being delayed. If you are having trouble decidingwhat you want to register, you can refer to the Application section of this guide, orcall the Client Service Center (CSC) at (819) 997-1936 and an Information Officer will behappy to answer any questions you may have.
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One trade-mark per applicationOnly one trade-mark can be applied for on eachapplication. Trying to register more than one word mark or design on the same applicationwill result in the application being delayed. Again, if youre not sure what you want toregister, call the CSC at (819) 997-1936.
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AbandonmentAn application for trade-markregistration may be consideredabandoned if the applicant doesnot take steps to complete theprocess.
Advertisement
Publication of a trade-markapplication in the Trade-marksJournal. Details are published toallow opportunity for challengesto the application (opposition).
AllowanceAcknowledgement by theTrade-marks Office that anapplication is eligible forregistration. The applicantreceives a Notice ofAllowance (not the same asCertificate of Registration).
Assignment
Transfer of trade-mark rightsfrom the owner to another party.
Certification marks
Marks identifying goods orservices meeting a definedstandard (e.g. the Woolmarkdesign on clothing).
Clearly descriptive
A word that clearly describes afeature of a product or serviceand therefore is not registrable asa trade-mark.
Copyright
Provides protection for literary,
artistic, dramatic or musicalworks (including computerprogams), and three othersubject-matter known as:performance, sound recordingand communication signal.
Deceptively misdescriptive
A word that may not be
registered as a trade-mark or partof a trade-mark because it ismisleading.
Disclaimer
A statement that a certain wordor portion of a trade-mark is notprotected.
Distinguishing guise
The shaping of wares or theircontainers, or a mode ofwrapping or packaging wares.
Examination
The process through which theTrade-marks Office determineswhether an application fortrade-mark registration warrantsgranting registration.
Fees
Specific sums payable to theTrade-marks Office for variousservices.
Filing date
The date a completed applicationis officially received at theTrade-marks Office and filed(not to be confused withregistration).
Incorporation
The act of establishing acorporation by filing the requireddocuments.
Industrial design
The visual features of shape,
configuration, pattern orornament (or any combination ofthese features), applied to afinished article of manufacture.
Infringement (of a trade-mark)
Violation of trade-mark rightsthrough unauthorized use of atrade-mark.
Integrated circuit topographiesThe three-dimensionalconfiguration of the electroniccircuits embodied in integratedcircuit products or layoutdesigns.
Intellectual property
A form of creative endeavourthat can be protected through atrade-mark, patent, copyright,industrial design or integratedcircuit topography.
Licensee
If an entity is licensed by or withthe authority of the owner to usethe mark, and the owner hasdirect or indirect control over thecharacter or quality of the waresor services with which the markis used, then the licensees use ofthe mark or a trade-nameincluding the mark is deemed tohave, and to always have had,the same effect as use by theowner.
Opposition
The process whereby membersof the public may object to thegranting of a trade-markregistration if they have validgrounds for doing so.
Patent
Covers new inventions (process,machine, manufacture, composi-tion of matter), or any new anduseful improvement of an
existing invention.
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GLOSSARY
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Plant breeders denominationA plant variety denomination is aright which is granted to theowner for the control over themultiplication and sale ofreproductive material for aparticular plant variety.
Place of origin
A word or depiction that desig-nates the origin of a product orservice and therefore may not beregistered as a trade-mark.
Preliminary search
The search of Trade-marksOffice records one shouldundertake before submitting anapplication for trade-markregistration. The search may turnup conflicting trade-marks andshow that the application processwould be in vain.
Pre-publication verification
A second search of Trade-marksOffice records to ensure no
confusing trade-marks existbefore a given application ispublished in the Trade-marksJournal.
Prima facie
Sufficient to establish a fact or toraise a presumption of factunless rebuted:prima facieevidence.
Prohibited marks
Marks which are specifically
prohibited from use throughsubsection 9(1) of theTrade-marks Act.
Proposed use
A statement indicating intentionto use a certain trade-mark andhow that use will occur.
Protected geographicalindication
A geographical indication is anindication which identifies that awine or spirit originates from aterritory where a quality, reputa-tion or other characteristics ofthe wine or spirit is essentiallyattributable to its geographicalorigin and which is listed on theList of Geographical Indications
kept by the Registrar.
Registration
The granting of formalrecognition of a trade-mark bythe Trade-marks Office.
Registered trade-mark
A trade-mark entered on thefederal governments Trade-marks Register, which formallyrecognizes the owners rightsto the mark.
Registrar of Trade-marksThe official responsible for the
Trade-marks Office.
Trade-mark
A word, symbol or design (orcombination of these) used todistinguish the wares or servicesof one person or organizationfrom those of others in themarketplace.
Trade-mark agent
A trade-mark agent is a personwhose name is entered on the list
of trade-mark agents and who istherefore entitled to practicebefore the Trade-marks Office.
Trade-marks Act
Federal legislation governingtrade-mark registration inCanada.
Trade-marks JournalA publication of the Trade-marksOffice issued weekly andcontaining all approvedapplications and Office rulings.
Trade-marks Office
The federal governement agencyresponsible for registering trade-marks in Canada.
Trade-marks records
The inventory of registeredtrade-marks and pendingapplications maintainedelectronically by theTrade-marks Office in Gatineau,Quebec.
Trade-marks Register
The official listing of registeredtrade-marks.
Trade name
The name under which acompany chooses to operate.Trade names may or may not
also be considered trade-marks,depending on the circumstances.
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