IPTrademarkSolutions – Your Intellectual Property matters.
At Nexus, we understand that a business’ success largely depends upon on the messages being conveyed and the image being projected. To the extent that a trade-mark represents a business’ message and image, trade-marks constitute important and valuable business assets.
Our experience extends to creating and managing worldwide-trade mark portfolios, licensing and litigating trade-mark disputes.
We offer our clients a wide range of services, including:
Registrability and clearance searches
Validity and infringement opinions
Preparation, filing and prosecution of trade-mark applications in Canada and internationally
Opposition and cancellation proceedings
Trade-mark litigation including infringement, counterfeiting, grey-market goods, unfair competition, comparative advertising and personality rights actions.
Domain name disputes
More on Trademark law
A trademark is a word, symbol, design, or a combination of these, used to distinguish the goods or services of one person in Canada from those of others in the Canadian marketplace
Trademarks are often the primary way that consumers differentiate between the products or services in the marketplace. Consequently, trademarks tend to represent the identity and reputation of the trademark owner, and they are valuable business assets.
A key way of protecting trademarks in Canada is through the registration of the trademark. Registration gives its owner the exclusive right to the use of that trademark for the wares/services for which it is registered throughout Canada. Applications for registration of a trade-mark in Canada may rely on any one of four different bases. These are proposed use, prior use, mark being well-known, or registration of the same mark in a foreign jurisdiction. One can register a mark in block letter form or in combination with a design. Alternatively, a design alone may be registered.
Since trade-marks are registered only in respect of specified wares/services, a complete specification of these wares/services must be provided in ordinary commercial terms with any application. In Canada one can specify as many different wares/services as desired in a single application. Other countries have a classification system in which a single application is limited to one class of wares or services. An application in Canada must indicate the date of first use of the mark for each of the different wares/services or, if there has been no such use, the application for those wares/services is based upon proposed use or on a foreign registration. Although uncommon, an application in Canada can also be based upon the mark being well-known in Canada.
Use of a trade-mark in Canada is achieved if the wares in association with which the mark is used have the trade-mark marked on them or on packaging containing the wares at the time of transfer of property in or possession of the wares, in the normal course of trade. Normally, use occurs at the time the goods are sold but could also be deemed used at the time of transfer of possession even if the sale occurs later. For services, a mark is deemed used if it is displayed in either the performance or advertising of those services.
Registration of a mark in Canada takes between 1 and 2 years. After an application is filed the application is classified and given a file number. A filing receipt is sent to the Applicant’s agent at that time – about 6 -10 weeks after filing of the application. After about 4-8 months the examiner does a search to determine if the subject trademark is likely to be confused with an existing registered trade-mark or a mark for which application has been made. In addition the Examiner may consider that there are formal defects in the application. All of the Examiner’s objections are set down in an Examiner’s Report and sent to the agent of the Applicant. The Applicant then argues against the objections or amends the application to comply with them. This process may occur more than once. Finally the application is approved for advertisement in the Trade-marks Journal. If within 2 months of the date of publication there is no opposition by third parties, the opposition period expires and the application is subsequently allowed. A registration fee of $200 is then requested. If based upon proposed use a Declaration of Use by the applicant is requested together with the $200 registration fee and the application then proceeds to registration.