In Canada, trademarks are a cornerstone of intellectual property (IP) law, offering businesses the tools to protect their identity and stand out in the market. But what makes for a “strong” trademark under Canadian law, and why should you prioritize registering it with the Canadian Intellectual Property Office (CIPO)? Let’s delve into these key considerations and outline how to navigate the trademark registration process effectively.

What Makes a Strong Trademark in Canada?

Under the Trademarks Act, a trademark is defined as a sign or combination of signs used to distinguish the goods or services of one person or organization from those of others. A “strong” trademark stands out for its distinctiveness and the legal protection it provides against imitation or infringement.

Distinctiveness

Distinctiveness is the cornerstone of trademark strength. According to Section 2 of the Trademarks Act, a trademark is distinctive if it actually distinguishes the goods or services of the claimant from those of others. Strong trademarks are inherently distinctive, meaning they’re unique and not descriptive of the product or service itself.

Categories of Distinctiveness from Strongest to Weakest:

  • Fanciful or Coined Marks: These are invented words with no prior meaning (e.g., “Kodak” for cameras or “Xerox” for photocopiers). They are the strongest type of trademarks.
  • Arbitrary Marks: Common words used in an unrelated context (e.g., “Apple” for computers). These marks tend to have a higher likelihood of protection.
  • Suggestive Marks: Marks that suggest a quality or characteristic of the product but require some imagination to make the connection (e.g., “Greyhound” for a bus service).
  • Descriptive Marks: Marks that directly describe the goods or services (e.g., “Cold and Creamy” for ice cream) are inherently weak unless they acquire distinctiveness through extensive use. This means that if a trademark is descriptive by nature, like the Cold and Creamy Ice-Cream, it will have a lower likelihood of being registered due to its lack of distinctiveness.
  • Generic Marks: Common names for goods or services (e.g., “Computer” for computers) cannot be registered as trademarks.

Non-Deceptiveness

A strong trademark must not mislead the public. Section 12(1)(b) of the Trademarks Act prohibits trademarks that are “clearly descriptive” or “deceptively misdescriptive.” For instance, claiming your product is “made in Canada” when it’s manufactured elsewhere could render the trademark invalid.

Avoiding Conflict With Existing Marks

A strong trademark avoids conflicts with previously registered marks. During the registration process, CIPO examines the trademark to ensure it doesn’t create confusion with existing trademarks. Section 6 of the Trademarks Act outlines the factors for determining confusion, such as the nature of the goods, the channels of trade, and the degree of resemblance between the marks.

In the landmark case, Masterpiece Inc. v. Alavida Lifestyles Inc., the Supreme Court of Canada highlighted the importance of avoiding confusion in trademark registration. The Court emphasized that even a lesser degree of resemblance could lead to confusion if the trademarks are used in the same industry or geographical area. If your business has a name, for instance, that is highly similar to that of another existing business name, it could spell trouble for your business’s intellectual property protection. If a business believes your mark conflicts or infringes with its mark, it could commence legal action against your business through a trademark infringement lawsuit.

A trademark infringement lawsuit can result in significant financial and reputational consequences for your business, underscoring the importance of selecting a unique and defensible trademark from the outset. Under Section 20(1) of the Trademarks Act, the owner of a registered trademark has the exclusive right to use the trademark throughout Canada and can enforce these rights against any infringing party.

Proper Use as a Trademark

Using a word or design merely as a decoration or informational statement may weaken its eligibility for registration. The mark must function as an identifier of the source of goods or services. A logo, for instance, that is commonly used throughout the course of your business would be an example of an appropriate mark to submit for registration.

Why Register Your Trademark?

While acquiring some rights to a trademark through mere use is possible, registration with the Canadian Intellectual Property Office provides significant advantages under Canadian law. Here is why:

Exclusive Rights Across Canada

Registration grants you exclusive rights to use the trademark across Canada, regardless of whether you operate exclusively in Alberta or all over the country. This is especially crucial in a digital-first economy where geographic boundaries are often irrelevant, and it has never been easier to “copy-cat” or even masquerade as someone else’s brand without their consent.

Enhanced Legal Protection

Presumption of Ownership & Validity

A registered trademark provides a presumption of ownership and validity under Canadian law. This makes it easier to enforce your rights if someone uses a confusingly similar mark.

In Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltee, the Supreme Court of Canada upheld the rights of the luxury champagne brand Veuve Clicquot, reinforcing the value of trademark registration in protecting against dilution and unfair association.

Deterrence Against Infringement

Registration is a public notice of your rights, deterring others from adopting similar marks. This visibility can reduce the risk of legal disputes and associated costs.

Simplified Enforcement and Licensing

A registered trademark streamlines enforcement actions and facilitates licensing agreements, franchising, and other commercial IP transactions.

International Expansion Opportunities

Under international treaties such as the Madrid Protocol, a Canadian trademark registration can be a basis for protecting your brand in multiple jurisdictions. This simplifies global brand protection and reduces costs.

Steps to Registering a Trademark in Canada

1. Preliminary Steps: Trademark Search

Before filing your application, conduct a thorough trademark search to identify potential conflicts. CIPO offers a database called the Canadian Trademarks Database, which is an invaluable tool for this purpose. Professional legal advice can help you interpret search results and assess risk.

2. Filing the Application

To register a trademark in Canada, you’ll need to file an application with CIPO. The application must include:

  • The name and address of the applicant
  • A clear representation of the trademark
  • A description of the goods or services associated with the mark
  • The filing fee

3. Examination

CIPO will examine your application to ensure it complies with the requirements of the Trademarks Act. If there are objections, you’ll receive a report outlining the issues and providing an opportunity to respond.

4. Publication and Opposition

If the application passes the examination, the trademark is published in the Trademarks Journal for a two-month opposition period. During this time, third parties can challenge the registration.

5. Registration

If there are no oppositions, or if oppositions are resolved in your favour, CIPO will issue a certificate of registration. The trademark is then protected for an initial period of 10 years, with the option to renew indefinitely.

Fees and Timelines

Filing Fees

An up-to-date list of trademark application filing fees can be found on the Canadian Intellectual Property Office’s website.

CIPO has announced that its filing fees will increase as of January 1st, 2025. Below are the fees for an application for the registration of a trademark (if the application and fees are submitted through CIPO’s online portal):

1st Class of Goods or Services to which the application relates

  • 2024 fee: $458.00
  • 2025 fee: $478.15

For each additional class of goods or services

  • 2024 fee: $139.00
  • 2025 fee: $145.12

Timelines

The entire registration process typically takes 18 to 24 months, depending on factors such as the complexity of the application, whether any oppositions arise, and the backlog that the Canadian Intellectual Property Office is dealing with. An expedited examination is available under specific circumstances, such as pending litigation or counterfeiting concerns.

Don’t Wait to Protect Your Brand

In Canada, a strong trademark is essential for building and protecting your brand. By ensuring your trademark is distinctive, non-deceptive, and free of conflicts, you lay the foundation for robust legal protection. Registering your trademark with CIPO amplifies this protection, offering exclusive rights, enforcement power, and international opportunities.

The race to registration is not just about securing legal rights; it’s about safeguarding your business’s reputation and market position. With the right strategy and support, you can ensure your trademark becomes a powerful tool for growth and success in Canada and beyond.

Contact DBH Law for Innovative Trademark Law Advice in Calgary

DBH Law‘s knowledgeable trademark and intellectual property lawyers safeguard your IP and confidential information. Our comprehensive services include trademark and copyright registrations, sale and licensing agreements, and trademark enforcement. We guide clients through the complexities of intellectual property protection, tailoring solutions to safeguard your brand and innovations. To schedule a consultation, please call 403-252-9937 or contact us online.