Trademark registration in Canada

Currently, Canada is on the rebound, the Canadian economy is recovering from the COVID-19 pandemic. The unemployment rate is low at around 5.1% (according to October 2023 figures), lower than pre-pandemic levels. In addition, the labor market in Canada is vibrant because many businesses invest here, creating many job opportunities for workers. Therefore, there are many businesses that choose to invest in Canada. The first thing when expanding the scope of business in Canada, businesses need to trademark their brand. Canada is known as a country with a prestigious brand platform, with many globally famous brands such as Air Canada, Bombardier, Canada Goose, Lululemon, Shopify, Tim Hortons,… Canada has a highly regarded trademark law system, effectively protecting intellectual property rights for businesses. Canada’s online trademark registration system simplifies procedures and shortens registration times. The Government of Canada strives to protect the trademarks of domestic and international businesses. Viet An Law Firm would like to guide customers preliminarily through the procedure for trademark registration in Canada through the article below.

Legal basis

• Trademark Law (Revised Federal Law, 1985, chapter T-13) (effective until June 18, 2019);
• Trademark Regulations (Canada Charter Portal Regulations, 2018-227).

Distinguish between brand names and trademarks

Your trade name is the name of your business. A brand name is only registered under the Trademark Law if it is also used as a trademark, i.e. used to identify goods or services.

Example: You own an ice cream shop whose company name is “A.B.C. Ltd.”.

• Case 1: People know your ice cream as “A.B.C. Ltd.” because you use it as a trademark on your product. Therefore, you may register the brand name “A.B.C. Ltd.” as a trademark.
• Case 2: People know your ice cream as “North Pole,” which is the name you use to promote your product. Even though your company name is “A.B.C. Ltd.,” no one comes to mind when they think of the products you sell. In this case, the name “A.B.C. Ltd.” is not used as a trademark but as a brand name.

Thus, it is possible to distinguish brand names and trademarks as follows:

• A brand name is a business name.
• A trademark is a mark to identify a good or service.
• A brand name is only registered under the Trademark Law if it is also used as a trademark.

General overview of trademarks in Canada

Definition of trademark

A trademark is a mark or combination of marks used or intended to be used by an individual to distinguish their goods or services from those of others.

Over time, a trademark symbolized not only the actual goods or services an individual or company provides, but also the reputation of the manufacturer. A trademark is a very valuable intellectual property.

Types of trademarks that can be registered in Canada

• Common trademarks: Include words, designs, flavors, textures, animations, packaging methods, holograms, colors, or combinations of these, used to distinguish an individual’s or organization’s goods or services from others. For example, you start a fast delivery company and name it “Giddy-up”. You can register these words as trademarks (if you meet all legal requirements) for the service you provide.
• Certification marks: May be licensed to multiple individuals or companies for the purpose of showing that certain goods or services meet a defined standard. For example, Woolmark designs, owned by Woolmark Americas Ltd., are used on clothing and other items.

A trademark can be one or a combination of the following elements, which are used to distinguish the goods or services of an individual or organization from others: Word, Sound, Design, Taste, Color, Texture, Scent, Animation (including motion pictures),  Holographic shapes (cubes), Packing way, Holograms.

Trademark filings in Canada

The application form includes the following information that is required to be filled out:

• Name and mailing address of the applicant
• Description or image, or both, of the trademark
• A detailed list of goods and services related to the trademark, using common and specific commercial language
• Inventory of goods and services grouped by Nice Classification
• Application fee
• Any other specific requirements for the type of registered trademark
• The applicant must submit a separate application for each trademark wishing to be registered. However, an application may include multiple goods or services for a particular trademark.

Description or photo

• The applicant’s application must include a description or image, or both, of the trademark, clearly demonstrating the contents of the registration.
• Multiple images showing different perspectives of the brand can be used if necessary to clearly depict it.
• The size of the image should not exceed 8cm x 8cm.
• For color marks or trademarks that claim ownership of colors, color images should be submitted with a description of the colors and where they appear on the mark.
• For audio and motion picture trademarks, descriptions and electronic copies of the trademark should be submitted.

Trademark Application Fees in Canada

Note: The application fee depends on how the application is submitted (online or via other methods).

Apply online via CIPO’s website:

• The first group of goods or services:
  • 2024 Fee: $458.00
• Each additional group of goods or services:
  • 2024 fee: $139.00

Apply by other methods:

• The first group of goods or services:
  • 2024 fee: $597.00
• Each additional group of goods or services:
  • 2024 fee: $139.00

How to file for trademark registration in Canada

To file for trademark protection in Canada, you can file using the following filing methods:

• Direct Submission: You can go directly to  the Canadian Intellectual Property Office (CIPO) at 50 Victoria Street Gatineau, Québec K1A 0C9 to submit your application and related documents.
• By Post or Email, Fax: You can send your application and all required documents via postal or courier service to the address of the Canadian Intellectual Property Office (CIPO) at 50 Victoria Street Gatineau, Québec K1A 0C9.
• Submit online via website: https://sso.ised-isde.canada.ca/auth/realms/individual/protocol/openid-connect/auth?response_type=code&client_id=cipo-ecomm-tm-filing&redirect_uri=https%3A%2F%2Fwww.ic.gc.ca%2Fapp%2Fscr%2Fopic-cipo%2Fmc-tm%2Fdepot-filing%2Fsso%2Flogin&state=0204c741-6a20-404a-8747-073101d01c4b&login=true&ui_locales=en&scope=openid When applying online you should pay attention to the payment of the relevant fee according to guidance from the Intellectual Property Office of Canada.

Trademark registration in Canada through the Madrid System

The Madrid system is a convenient and cost-effective solution for global trademark registration and management. File a single international trademark application and pay a one-time fee to apply for protection in up to 130 countries. Claimants can modify, renew or expand their global trademark portfolio through a centralized system.

Madrid Agreement:

• The Madrid Agreement allows trademark owners to register their trademarks in a single member state (“country of origin”) and then extend protection to other member states (“nominating countries”) through a single international application.

Madrid Protocol:

• Canada accessed the Madrid Protocol on June 17, 2019.
• The Madrid Protocol modernizes and simplifies the international registration system of trademarks established under the Madrid Agreement.
• The Madrid Protocol allows trademark owners to designate additional member states to an international application already filed under the Madrid Agreement or Madrid Protocol.

Trademark registration dossier under the Madrid System

The Madrid Application consists of the Madrid Single of Vietnamese origin and the Madrid Single with the Canadian designation.

For the Madrid Application of Vietnamese origin, the applicant must submit through the state management agency for industrial property rights, i.e. the National Office of Intellectual Property of Vietnam. According to Article 25 of Decree 65/2023/ND-CP, a Madrid application of Vietnamese origin includes the following documents:

• Declaration of request for international registration of a trademark of Vietnamese origin (Form No. 01 in Vietnamese in Appendix II of Decree 65/2023/ND-CP);
• 02 MM2 declarations according to the form of the International Office in English or French;
• 02 trademark samples exactly as the trademark in the application filed in Vietnam (establishment application) or trademark registration certificate (establishment registration);
• 02 MM18 declarations in English (if the application has a US designation);
• Written authorization in Vietnamese (According to the form of Viet An Law Firm);
• Documents of payment of fees for international registration of trademarks of Vietnamese origin;
• Other relevant documents (if necessary).

Application fees through the Madrid System

The fees include:

• Basic fee (653 Swiss francs; or 903 Swiss francs for a color mark) (Note! A 90% discount applies if the applicant lodges an application with the Intellectual Property Office of a developing country at least); and
• Additional fees depend on where the claimant wishes to protect his trademark and the number of groups of goods and services he or she wishes to register. In order to expand its geographic reach, or modify or renew its international registration, the applicant will have to pay additional fees.

Trademark registration service in Canada of Viet An Law Firm

• Perform the search and notify customers in writing of the results of trademark search in Canada;
• Draft the dossier and file directly on behalf of the trademark owner and monitor the status of the trademark application in Canada;
• Inform, advise and handle deficiencies/refusals of competent State agencies (if any) in the process of monitoring trademark application in Canada;
• Support follow-up, representative resolution of objections and feedback with intellectual property representatives performing procedures in Canada.
• Receive dispatches, certificates and hand over to customers (if any).

If you need to file a trademark application in Canada, please contact Viet An Law Firm for the most effective support.

Update: 4/2024