Benefits of Registering a Trademark in Canada

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By Carrie Kerr, October 17th, 2016

Are you trying to decide whether to register your trademark in Canada?

Although the application process at the Canadian Intellectual Property Office (CIPO) can be unfamiliar and may be daunting, the time, money and effort you put in to formally register your mark is always worth it in the end.

Here are some of the reasons why you should consider it:

 

From Coast-to-Coast...

A Canadian Trademark Registration provides you with the exclusive right to use your trademark across Canada in association with the goods and services covered by your registration. Provided that you are actually using your trademark, registering it will protect you throughout Canada, even if your business only operates in a limited geographical area.

This benefit of trademark registration is unlike common law trademark rights. In Canada, as soon as you start using your trademark you begin acquiring what is called “common law” rights to your trademark. This means you are generally entitled to the exclusive use of your trademark in the geographical area in Canada where your mark has gained a reputation.    

By registering your trademark, you would enjoy this exclusive use across the entire country.


...South of the Border...

Owning a registered trademark in Canada can help you get a foot in the door in the United States, even if you have yet to enter the U.S. marketplace.

If you are currently using your trademark in Canada in association with the goods and services covered by your registration, you can rely on that use and registration as a basis for filing in the United States. Once allowed by the United States Patent and Trademark Office (USPTO), your U.S. application can then proceed to registration without having to submit any specimens of use to the USPTO. Without this corresponding Canadian Trademark Registration, you would need to submit evidence to the USPTO showing that you have begun using your mark in the United States before your application could register.

However, you will eventually need to start using your mark in the United States in order to keep your trademark rights in the U.S., specimens of use need to be filed five years after registration; otherwise, you may risk losing your registration.

 

...and Beyond

When you first file your trademark application in Canada, it sets off a timer of sorts.

Under the Paris Convention, an international intellectual property treaty, if you file a trademark application in Canada and within six months file an application in another member country, your foreign application can claim “priority” back to the earlier-filed Canadian application.

Essentially, the effective filing date in that foreign country will be the date you filed your application in Canada. This might give you an upper hand, in a case of a conflicting mark, as you can claim the earlier Canadian filing date for your registered rights to the trademark in a foreign country.

 

So Should You Register Your Trademark?

Registering a trademark in Canada is an investment. There is no doubt that the process takes time and money, however, you will find that it is a valuable asset, one that can help assert your rights in Canada, the United States and in other foreign countries.

If you have any questions about Canadian trademarks or are ready to start a trademark application, please do not hesitate to contact us. We are always happy to help.

 

For more information please contact:

 
Carrie Kerr, Trademark Agent

T: 613.801.1092

E: This e-mail address is being protected from spambots. You need JavaScript enabled to view it.

 

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RANDALL MARUSYK

Partner


Randall is a partner of the firm and has been certified as a specialist in all areas of Canadian IP Law.
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