Those seeking to register a trademark in Canada need to register it with the Canadian Intellectual Property Office (CIPO). CIPO is a federal agency that handles all the trademark applications throughout the entire country. To register with the CIPO, you would fill out a form online after you have made the required trademark search.
There is no such thing as registering a trademark with one of the provinces. There are no intellectual property agencies in the provinces, only one on the federal level. Even if the trademark is only going to be used in one province, federal registration is necessary because that is the only option.
If You Want to Do Business in Canada, You Must Register Your Trademark Here
Canada does not recognize trademarks granted elsewhere. For instance, if your trademark has been registered in the United States, your intellectual property is not automatically protected inside Canada. You need to file for a separate Canadian approval. If you do not quickly file in Canada, someone else may beat you to the punch and secure the Canadian trademark to what otherwise should be your intellectual property.
You must be located within Canada in order to file a trademark application. This means that you need to have an actual street address, and a post office box will not suffice.
If you are a person or company outside of Canada wanting to register a trademark, you would contact a local trademark agent. This agent must be qualified to get correspondence from the CIPO. Our law firm can handle your application if you want to register inside Canada. Once you have registered your trademark, you need to use it within Canada in order to keep it. Otherwise, your trademark can be expunged.
Canadian Companies Need Also Register their Trademarks in Foreign Countries
If you are a Canadian company and do business outside the country, you would need to register your trademark anywhere else that you do business. Your Canadian trademark would only protect your intellectual property within Canada. There is an entirely separate protocol for international trademarks that govern where and how to protect your intellectual property. You would need to contact a local trademark agent wherever you want to register outside the country. Canada just recently joined the Madrid Protocol, which means you can register your trademark in over 100 countries with one single application.
In the United States, trademarks are registered where you do business. If your company is located only in one state, you would register the trademark in the state where you are domiciled and do your business. You only register a trademark federally when your company is engaged in interstate commerce. In practice, most U.S. companies are engaged in interstate commerce to an extent, so they end up registering with the United States Patent and Trademark Office.
The Differences Between Trademark Registration Between the U.S. and Canada
While the processes between the two countries have become largely similar, there are a number of differences between Canada trademark registration and U.S. trademark registration. Many major differences between the two systems have narrowed as Canada has made recent changes to its trademark rules and processes. Before the 2019 amendments to the Trademarks Act, the two countries had numerous distinctions.
Canadian Trademark Registration Takes Longer than the U.S.
One major difference is the time that it takes to have your application examined. In the U.S., the examination begins roughly three months after filing. In Canada, the timeframes are longer. Your application is assigned to a Canadian examiner after roughly seven months. This means that your U.S. approval would usually happen in less than two years, while your Canadian approval can take up to two years.
There is another key difference between U.S. and Canadian trademark laws that make legal help in Canada even more necessary. At any stage in the trademark registration process, someone else can file an opposition to your application. This happens because they believe that your trademark encroaches on one of theirs.
In the United States, the opposition period that someone has to contest your trademark application is 30 days. Even after the Trademark Act amendments, the opposition period in Canada is 60 days. This gives opponents twice as long to file an opposition, and an opponent can even request an extension of time beyond the 60 days. It increases the likelihood that you may need to defend your trademark registration. An opposition proceeding can involve protracted litigation.
Canadian laws have now changed, and you need the help of an experienced intellectual property attorney to help you navigate the legal landscape. While the process has become easier, there is much more of a risk of opposition and people racing to file trademarks. This is why legal assistance is a must.
Note: In this article, We have read about Where Should You Register Your Trademark? A Clear Guidance for beginners.
