What do trademark opposition proceedings involve?

No. You do not need a lawyer to renew your trademark registration. You can renew your trademark registration online simply by using CIPO’s trademark e-filing services.

You must pay a renewal fee every ten years to keep your trademark registration active. CIPO will send you a renewal reminder notice approximately six months before the deadline, but it’s a good idea to diarize the deadline (and a few reminders) in your personal calendar. If the renewal fee isn’t paid on time, your registration will be expunged (cancelled).

A trademark registration is valid for ten years and is renewable.

Your Certificate of Registration means your trademark has been successfully registered with the CIPO. It is confirmation that your trademark has been officially entered into the Register of Trademarks and assigned a registration number and registration date. Registration grants you the exclusive right, Canada-wide, to use your trademark in association with the registered products and/or services.

Yes. If an opposition ruling goes against you, can file an appeal with the Federal Court of Canada.

If the TMOB rules in favour of the opposing party, your trademark application could be completely or partially refused.

The ‘TMOB’ stands for the ‘Trademarks Opposition Board’. The TMOB is the division of the CIPO that handles trademark opposition proceedings, as well as expungement proceedings (under Section 45 of the Trademarks Act).

Many trademark oppositions are resolved in the early stages by the parties negotiating mutually agreeable terms, such as excluding conflicting products or services from a trademark application or agreeing to certain limitations on trademark use. Because oppositions can get complicated (and costly), most parties are motivated settle quickly and amicably.

If your application is opposed, you might need a trademark agent or lawyer. Oppositions are complicated and much like court proceedings. If you want our help to respond to an opposition (or to oppose someone else’s trademark application), we charge on an hourly-rate basis.

Fewer than 5% of our trademark applications involve oppositions.

A ‘trademark opposition’ occurs when someone formally opposes your trademark application. After approving your application, but before registering your trademark, the CIPO will advertise your application for a two-month period to give others a chance to object (with valid reasons). Anyone (such as a competitor) can oppose your application during this two-month window by filing a Statement of Opposition and paying the government fee.

The CIPO publicly advertises your trademark application to give others an opportunity to oppose it (with valid reasons) before your trademark registers. After issuing the Notice of Approval, your application will be advertised for a two-month period in the Canadian Trademarks Journal, a weekly publication, available online, that lists recently approved trademarks. An opposition can only be filed within that two-month window.

The CIPO will send you a Notice of Approval after your trademark application successfully passes examination. The notice informs you that your application will be advertised for opposition purposes. It also summarizes the application details (applicant name, trademark, products and services) for your final review.

It is generally not possible to get an extension of time to respond to an Examiner’s Report (unless certain exceptional circumstances can be demonstrated). So, it’s crucial that you note the response deadline in your personal calendar and give yourself plenty of time to prepare and file your response.

If you don’t respond to the Examiner’s Report by the deadline, your trademark application will be considered in default and a Notice of Default will be issued. If you do not remedy the default within the strict deadline set out in the notice, your trademark application will become abandoned, and cancelled.

We developed our Light Touch service because we believe you can easily handle the majority of issues raised in Examiner’s Reports without professional assistance. The possible exception are three refusals which may require substantive responses:

·        descriptiveness (if you sell coffee and you try to trademark the dictionary word
“coffee”)

·        confusion with a prior-existing registered or pending trademark

·        non-distinctiveness (not unique enough to serve as a ‘badge of origin’)

Yes. A simple (formal) issue is usually resolved by filing a revised application, making adjustments where needed. A complex (substantive) refusal may require legal arguments to challenge the examiner’s position. Writing a ‘substantive response’ requires an understanding of trademark laws and rules – we can help you with this.

Our flat fee for preparing and filing a substantive response is $850 (CAD) plus tax.

If your application receives a substantive refusal, you should first try to resolve the concern by speaking with the examiner over the phone. In some cases, a refusal may be withdrawn simply by making a minor adjustment to the application. However, if a substantive response is required, we can assist you on a flat-fee basis.

Fewer than 5% of our trademark applications involve substantive refusals.

A trademark may be ‘confusing’ with an existing trademark if it looks or sounds alike, suggests similar ideas, and is used to sell similar products or services. This may cause consumers to be confused as to the source of the products and services. A confusing trademark is generally not registrable because the existing trademark owner has prior rights to registration.

A ‘descriptive’ trademark means it describes the character or quality of the products and/or services listed in the application (for example, trying to trademark ‘creamy’ for ice cream or ‘juicy’ for apples). Descriptive trademarks are generally not registrable because it would be unfair to competitors to give one business a monopoly on common dictionary words used to describe the products or services of that industry.

In Canada, a brand name, logo, or slogan cannot be registered if it is considered ‘scandalous, obscene or immoral’. If a trademark comprises profane language, obscene visuals, or racial slurs, it won’t likely succeed.

A substantive refusal is a complex objection. A CIPO examiner may issue a substantive refusal if they consider your trademark to be:

·        obscene

·        descriptive of the products and/or services

·        confusing with a pre-existing pending or registered trademark

·        non-distinctive

Examiner’s Reports may be issued for simple (formal) and complex (substantive) reasons. An example of a formal issue is a requirement to clarify the nature of your products or services. An example of a substantive issue is a refusal based on your trademark being considered confusing with a pre-existing trademark.

The Examiner’s Report is a written notice issued by a CIPO examiner that outlines any deficiencies, requirements, or conflicts identified when the examiner assesses your trademark application for compliance with trademark laws and rules. The Examiner’s Report lists the examiner’s concerns, what is required to resolve them, and the deadline to respond. You have six months to address the issues raised.

The trademark examination process involves an assessment by a CIPO examiner to ensure your application complies with trademark laws and rules, and does not conflict with pre-existing applications or registrations. If any deficiencies or conflicts are identified, the examiner will send you an Examiner’s Report outlining the issues and the deadline to respond.

‘CIPO’ stands for the Canadian Intellectual Property Office. Trademark applications in Canada are filed, examined, registered, and renewed with the CIPO.

Based on the CIPO’s current turnaround time, your application will be examined approximately 12 to 18 months after the filing date.

Unfortunately, there is no mechanism for expediting the registration process. The best way to ensure the fastest processing time is to hire an experienced, reputable trademark agent. A perfectly filed application will help to streamline the examination process.

The CIPO will give you a ‘first-position’ legal hold as the trademark owner from the day you filed your trademark. This gives you priority rights from day one. These rights are confirmed when you receive your Certificate of Registration.

The trademark registration process in Canada typically takes 18 to 24 months for straightforward applications.

Your renewal cost is dependent on the number of classes of products and/or services your registration covers. If paid online, renewal fee is $400.00 (CAD) for the first class, plus $125 (CAD) for each additional class listed in the registration.  

No. Renewal of your trademark registration is not included in our fees.

The final decision about Canadian trademark registration is made by the CIPO, about 18 to 24 months into the process. For that reason, if the CIPO has refused your application, we cannot provide a refund.

Our hourly fees vary (depending on the practitioner) from $250 to $500 (CAD).

Based on the CIPO’s current turnaround time, your application will be examined approximately 12 to 18 months after the filing date.

Unfortunately, there is no mechanism for expediting the registration process. The best way to ensure the fastest processing time is to hire an experienced, reputable trademark agent. A perfectly filed application will help to streamline the examination process.

The trademark registration process in Canada typically takes 18 to 24 months for straightforward applications.