Trademark registration in Canada - The ultimate guide

According to the latest World Bank annual ratings, Canada ranks 23rd out of 190 economies for ease of doing business. It is one of the most attractive countries for highly qualified workers and comes out as the most attractive market for entrepreneurs. Canadian trademark registration offers a myriad of benefits, including an exclusive right to use your trademark in association with registered goods or services across Canada and the right to exclude others from using confusingly similar trademarks.

The main government agency that administers and processes trademark matters in Canada is the Canadian Intellectual Property Office (CIPO). The CIPO's areas of activity include patents, trademarks, copyright, industrial designs and integrated circuit topographies.

Canada is a so-called First-to-Use country, meaning the CIPO grants trademark rights to the first entity to use the trademark in association with the sale of goods or services on the market.

An average processing time of a trademark application in Canada from filing to its registration is approximately 24-32 months, provided the trademark has not been objected to or opposed by other trademark owners.

Different fees must be paid during the trademark registration process.

Fees for an application for the registration of a trademark, if the application and the fee are submitted online through the CIPO's website:

Fees for an application for the registration of a trademark, if the application and the fee are submitted through any other means:

The fee for the issuance of a trademark registration certificate is: $210.51

Any individual, partnership, trade union, association, joint venture, or corporation can register a trademark by themselves, given that they have a registered address in Canada. Foreign applicants residing outside of Canada are recommended to perform the trademark application process in Canada through a  licensed trademark attorney. Having a local representative can significantly reduce the time and cost of the application procedure. 

For a trademark to be eligible for registration, it has to meet specific criteria, one of them being distinctiveness. As the purpose of a trademark is to distinguish a recognisable source of goods or services to the customer, only a sign with at least a minimum level of a distinctive character can achieve this purpose without consumer confusion. The more descriptive or customary a name, logo, or any other brand elements are, the less likely they will be registered by the CIPO. You can learn more about registration requirements and the distinctiveness of trademarks by visiting our Trademark Academy.

Another important step in applying for a trademark is ensuring that it is not confusingly similar to already registered marks. Many starting businesses that tried to register their trademarks without prior research have either suffered rejection directly from the CIPO or received opposition from their competitors who registered their marks prior to them. Trademark law strongly prioritises companies that file trademark applications first, even if the registration process was not yet completed. As a result, the CIPO, in general, recommends searching their trademark database before submitting an application.

In your application, you must provide details of your trademark and the list of goods or services you want to use under your trademark to the CIPO. Therefore, all the Nice classes and their respective individual terms you wish to register must be included. 

After filing the application, the CIPO will:

A trademark application is reviewed by an examiner at the CIPO. An examiner may approve the application for publication as filed, or may raise various requirements or objections. For example, there may be an objection that the mark is clearly descriptive of the relevant goods or services, or that the goods or services should be defined in greater detail, or that the mark is confusingly similar to  earlier applications or already registered marks. Applicants are given an opportunity to respond to such objections and, if appropriate, to amend the application.

Once an application is examined, a formal notice of approval is issued, and thereafter the application is published in the Canadian Trademarks Journal. Once published, one or more third parties may oppose the application on a variety of grounds, including prior use of a confusingly similar trademark or trade name. Trademark oppositions, which are often lengthy and complex in nature, are decided by the Opposition Board, usually on the basis of evidence filed in the form of affidavits or declarations, and in some cases, cross-examinations thereon, as well as written and/or oral arguments by the parties.

If no opposition is filed, or opposition is unsuccessful or withdrawn, the application proceeds to allowance. Once allowed, in order to obtain a certificate of registration, it is necessary to pay the registration fee and, if the application was filed based on proposed use, file a document entitled a Declaration of Use, stating that the mark applied for is now in use in Canada. A decision of an examiner or the Opposition Board regarding any of the above matters may be appealed to the Federal Court.

If someone opposes your application, the Trademarks Opposition Board will issue you a copy of the statement of opposition. You and the party opposing your application will then have a chance to file evidence and written arguments. If the opposition is successful, your application could be completely or partially refused. You have the right to appeal to the Federal Court of Canada.

Time: An opposition proceedings before the Registrar can take as long as two to four years or even longer.

Cost: Fee for filing a statement of opposition: $789.43

An opponent has two months from the date a trademark is published in the Trademarks Journal to initiate an opposition proceeding. This deadline can be extended in certain circumstances. The losing party will bear all costs of the opposition. Opposition processes that take up to 2-3 years can add up to the total cost of tens of thousands of dollars.

A Canadian trademark is valid for 10 years, after which it can be renewed an unlimited number of times. You can renew your trademark online or via post. If the request and the fee are submitted online through CIPO's website, the fees are:

If the request and the fee are submitted through any other means: