Trademark Applications & Prosecution
Securing a Canadian trademark registration starts with a well-prepared application and careful handling of every step that follows. We guide applications from clearance to registration, anticipating issues the Trademarks Office is likely to raise and responding to them efficiently.
What we handle:
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Clearance searches and registrability opinions before filing or launch
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National trademark applications filed directly with CIPO
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Madrid designations into Canada, including responses to provisional refusals
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Office action responses, including goods and services amendments to meet Canadian practice
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Portfolio management, including renewals, assignments, and other recordals
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Watch services to identify conflicting applications early
Getting the details right in Canada
Canadian practice has its own requirements, and they're where many applications run into trouble.
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Goods and services. Goods and services must be described in specific, ordinary commercial terms and grouped by Nice class. Descriptions accepted in other jurisdictions, including many Madrid designations, often need to be revised before CIPO will approve them.
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Examiner objections. Distinctiveness, descriptiveness, and confusion objections each call for a different strategy. We respond with arguments grounded in the Trademarks Act, the case law, and CIPO practice, and with amendments that protect what matters most to the client.
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Planning for use. Registration in Canada doesn't require prior use, but a registration can be challenged for non-use after three years. We help owners file for the goods and services they genuinely intend to use, so their registrations hold up later.
From Filing to Registration
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Clearance. We search the register and assess registrability and risk before you file.
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Filing. We prepare the application, including a goods and services list drafted to Canadian standards.
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Examination. We respond to any office action with amendments or arguments, and keep you informed at each step.
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Advertisement. Once approved, the application is advertised in the Trademarks Journal, opening a two-month opposition period.
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Registration. If no opposition is filed, or once one is resolved, the mark proceeds to registration, with renewals due every ten years.
Frequently asked questions
Do I need to be using my trademark before registering it in Canada?
No. Since June 2019, a trademark can be registered in Canada without first showing use. However, a registration can be challenged for non-use after three years, so a genuine plan to use the mark remains important.
Can I designate Canada through the Madrid Protocol?
Yes. Canada has been part of the Madrid Protocol since 2019. If CIPO issues a provisional refusal, a Canadian agent is typically needed to respond, and we regularly handle these for foreign firms and their clients.
How long does registration take?
Timelines depend on CIPO's examination backlog and whether objections or oppositions arise. We'll give you a current estimate when you instruct us.
For advice or instructions on a Canadian trademark application, please contact us.