The very first step in protecting your brand is the registration of a trademark. Trademark protects your brand from being exploited by any third party and grants you an exclusive right to the use of your brand. Trademark is an asset which adds authenticity in the eyes of consumers. It not just highlights your good or brand from that of others but also affords legal protection in case someone uses your trademark without authorization. As of the latest amendment in 17 June 2019, trademarks are registered for a period of 10 years.
What Is A Trademark?
Trademark is a sign, symbol, mark, logos, or representation of words, symbols, marks etc. which affords a distinctive quality to your brand. It is always recommended to add some sort of representation of signs, symbols, or a combination of words, symbols, shapes, designs, etc. that represent your brand because word/s alone to be registered as a trademark are not a good idea.
Conducting Trademark Search
Before filing the application for registration of trademark, a thorough trademark search must be conducted. The search can be conducted on the website of Canadian Intellectual Property Office (CIPO). This step will protect you from future costs and can help you to see if there are any conflicting trademarks.
Application For The Registration Of Trademark
An application for the registration of a trademark is to be filed to the Registrar under section 30(1) of the Trademarks Act of Canada, 1985. While filing for registration, one is required to pay the application fees. Within the application, the person has to select the category under which his/her brand or service falls. The goods and services are categorized in the Nice Classification. Selection of correct class from the Nice Classification is essential in order to avoid objections and cancellations later in the stages of trademark registration application.
- Assessment of the Application
The registrar then assesses the trademark application. Under section 37(1) of the Act, the Registrar looks at the registration application and see if the trademark matches with another existing trademark, or if it’s not registrable, or fails to satisfy the essential contents of a trademark registration under section 30(2) of the Act, etc.
- Objections by Registrar
In case registrar raises an objection, a notice has to be served on the applicant according to section 37(2) of the Act. The notice provides the applicant an opportunity to clarify registrar’s doubts regarding the application.
- Publication in the Trademarks Journal
If registrar has no objections with regard to your trademark application, it will be accepted to be published in the Trademarks Journal. The journal can be accessible from the CIPO’s website. This advertisement/publication gives the public an opportunity to raise any concerns or objections, if any, regarding the trademark so advertised.
- Opposition on the advertised trademark
The opposition has to be filed to the registrar within 2 months of the publication of the trademark in the journal according to section 38(1) of the Act.
If the objection is substantial, the registrar forwards the copy of the statement of opposition to the applicant so that he/she can defend the opposition. The applicant has the right to file a counter-statement under section 38(7) of the Act. Both parties submit evidences supporting their claims. The registrar is authorized to finalize the opposition by either accepting or rejecting it.
- Registration of the trademark in the applicant’s name – the final step
After the finalization of objections, and if there has been no objection on the trademark after its publication in the journal and two months have been passed, then the registrar finally admits the application for the trademark to be registered and issues a certificate of registration of trademark. The trademark is registered in the name of the applicant and becomes entitled to its exclusive use for a period of 10 years.
On the expiry of the 10 years, registrar sends a notice to the registered owner of the trademark for the payment of the fee for the trademark renewal and if the owner fails in paying the fee, the trademark will be annulled.
- Amendments in the registered trademark
An amendment in the registered trademark can be made by the owner of the trademark to the registrar under section 41 of the Act.
Contact The Lawyers At Ayaz Mehdi Professional Corporation!
It is always recommended to protect your brand from being exploited and add legal backing to it by registering your trademark. For further assistance regarding trademark registration, reach out to us.
Disclaimer: Kindly note that sending or receiving information through this site does not establish a solicitor-client relationship. Legal matters are fact-specific, and the law is variably changing. The views expressed and the content provided on this blog are general guidelines and cannot substitute for proper legal advice. Schedule your legal consultation by clicking here: Let’s meet!
