Trademark Protection

The purpose of a trademark is to distinguish the source of origin of products or services from those of others. Traditionally, trademarks have consisted of any word, name, symbol, design, numeral or any combination thereof. But today, they can be so much more.

Over time, due to the advancement of technology and the development of new marketing strategies that were unthinkable before, there has been a global trend for businesses to adopt more and more non-traditional trademarks. Today, trademarks may include shape, sound, motion, scent, texture, taste, holograms, three dimensional objects and color. The sky is the limit!

Aventum’s Trademark Expertise

Aventum IP Law LLP assists you in determining the strength of a trademark, understanding the fundamentals of trademark protection and in gaining a better understanding of how to maintain the value of your trademarks over time.

Are you thinking about adopting a new mark for distinguishing your products or services from those of competitors? We will help you clear the mark and seek to protect it in the countries that are key for your business. Is your competitor using a mark too similar to yours? Or are you being sued? We will assist you in preserving your rights and enforcing them against others. Come and meet with us - let us help you find the better business approach to dealing with your particular situation.

Trademark FAQ

Registration is an important way to protect and increase the value of your trademark, as it:

  • Provides presumption of ownership
  • Gives you exclusive rights across Canada for 15 years even if you only use the mark in a restricted geographical area
  • May be renewed indefinitely by 15-year increments upon payment of the government fee
  • Allows you to sue for infringement if others adopt and use a trademark or trade-name likely to cause confusion

Under the Trademarks Act, the following are generally considered not registrable:

  • names and surnames
  • clearly descriptive marks
  • deceptively misdescriptive marks
  • words that denote a geographical location commonly known to be the place of origin of the goods and/or services associated with the trademark

Individuals, associations, organizations, corporations or any other legal entities may register a trademark. The only restriction is that a trademark may not be registered in the name of two or more entities, unless these entities form a legal entity of some sort, such as a partnership or a joint venture.

General Information:

  • name and address of the owner
  • the trademark
  • list of goods/services in ordinary commercial terms
  • a statement that the applicant is entitled to use the trademark in Canada
  • priority claim (optional)

One or more bases for registration:

  • use in Canada, in which case the date of first use must be provided
  • proposed use in Canada
  • use and application/registration in a foreign country
  • making known in Canada

A priority claim enables a trademark owner who filed an application in a country to subsequently file an application for the same or substantially the same mark in other countries within six months and to have it considered filed as of the earlier filing date. It allows a trademark owner to delay its filing strategy in other countries for up to six months and to retain their earliest filing date.

A trademark application is filed with the Canadian Intellectual Property Office (CIPO) with a government filing fee. The application is awarded an application number and filing date and is indexed on the register for searching purposes. It is then reviewed by an examiner to determine whether the trademark itself and the contents of the application comply with the requirements of the Trademarks Act and Regulations.

In particular, the examiner will identify any potential registrability problems, i.e. whether the mark may be considered clearly descriptive or deceptively misdescriptive of the associated goods or services, or whether it is confusing with any prior application or existing registration. The examiner will also review the description of goods and services to ensure it is set out in ordinary commercial terms, as required by the Act.

Any objections made against the trademark itself or the contents of the application will be raised in an office action and a specific timeline will be set to respond. Once the examiner is satisfied that all objections have been adequately dealt with and there are no further issues, the application will be advertised in the Trademarks Journal for opposition purposes.

If no third-party opposes the application, it will move on to allowance and subsequently to registration upon payment of the government registration fee. In the case of applications based on the proposed use of the trademark in Canada, the applicant must also submit a declaration that use of the mark in Canada in association with the goods/services set out in the application has commenced since the filing date.

No. If your goods or services are sold in other countries, or you intend to expand your sales into other countries, you should consider applying for a registration in each jurisdiction where you conduct or intend to conduct business.

Our experienced professionals are also here to guide you through the process of obtaining foreign registrations.

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