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The process

The trade-mark application process in Canada consists of a series of stages through which your application must proceed before your trade-mark can be entered on the Canadian Trade-marks Register. The entire application process, from filing the application to receiving the certificate of registration, can last anywhere from eight months to over two years. A trade-mark registration is valid for 10 years, and may be renewed for successive fifteen year periods thereafter.

The following is an overview of the different stages in the trade-mark application process:

1. STAGE 1

   Formalities

   After the trade-mark application has been filed with Trade-marks Office, the Formalities Section of the Trade-marks Office will review it to ensure that it is complete and that the proper administrative fee has been paid. If everything is in order, a file for the application will be created and entered in the database, and the application will be assigned a filing date and an application number. This stage can take anywhere from a couple of days to a couple of weeks.

2. STAGE 2

   Examination

   The application will then be assigned to an examiner at the Trade-marks Office who will evaluate the contents of the application. The examiner will conduct a search of the Trade-marks Office’s database to determine if there are any prior trade-marks, registered or in a pending registration, which are confusing with the applicant’s trade-mark. The examiner will also determine if the applicant’s trade-mark and the application itself complies with the formal and substantive requirements of the Trade-marks Act.

   If there are no problems, the application will be approved for the advertisement stage. If, however, the examiner has objections to the application, the examiner will outline the objections in a report and provide the applicant with an opportunity to make changes to the application or submit arguments responding to the objections. If the examiner still has concerns about the application, the examiner will send another report requesting additional changes. Each report that is issued by the examiner is called an “office action” because it is an action against the application that is taken by the Trade-marks Office. A resolution may be reached after the exchange of one or more response letter. In the event that a resolution cannot be reached, the application will be refused by the Trade-marks Office or abandoned by the applicant. It normally takes approximately six to eight months for the application to reach the examination stage. For each office action, a response must be submitted within four months. If no response is submitted and no extension of time is requested, the Trade-marks Office will declare the application to be abandoned.

3. STAGE 3

   Advertisement

   After the application is approved, it will be advertised in an issue of the Trade-marks Journal. Typically, it takes approximately four months for the application to appear in the Trade-marks Journal after it has been approved. During the two-month period after the application is advertised, any member of the public may come forward to oppose the application. If the application is opposed, it is taken out of the application process until the opposition is resolved. However, if no one files a statement of opposition, or requests an extension of time to file a statement of opposition, within the two-month period, the application will be allowed for registration.

4. STAGE 4

   Registration

   After the application is allowed, the Trade-marks Office will require payment of a final registration fee before the trade-mark is entered on the register. If the application is based on proposed use, a declaration stating that the trade-mark has actually been used by the applicant must be submitted along with an additional filing fee. The required fees and the Declaration of Use must be submitted within six months from the date of allowance or three years from the filing date, whichever is later. If more time is needed by the applicant to put the trade-mark in use, the Trade-marks Office will grant extensions of time for the applicant to submit the Declaration of Use. Each extension of time is for six months and an additional fee must be paid for each extension. Approximately one month after the submission of the registration fee, the Trade-marks Office will register the trade-mark and issue a Certificate of Registration to the applicant.