DOBRMAN

What is a trademark application?

A trademark application is a formal filing made with the Canadian Intellectual Property Office (CIPO) to register a trademark and secure the exclusive right to use that mark across Canada in association with specified goods and services. Once a trademark application is filed, it is examined by the Registrar of Trademarks, advertised for opposition, and — if it clears examination and any opposition proceeding — proceeds to registration. A registered trademark provides nationwide rights, a presumption of ownership, and a stronger foundation for enforcement than unregistered common law use. For businesses that depend on brand identity — including tech companies, content creators, game developers, franchisors, and consumer product companies — a trademark application is often one of the most important intellectual property filings.

Why you should consider a trademark application

Securing nationwide rights. A trademark application that results in a registration provides exclusive rights to use the mark across Canada in association with the registered goods and services. Without a trademark application and registration, rights are generally limited to the geographic area of actual use under common law.

Unlocking new brand enforcement options. Securing a registered trademark unlocks new legal mechanisms to protect your brand. Owners of registered trademarks can bring claims for trademark infringement and depreciation of goodwill. With only a common-law trademark, your legal options are likely limited to a claim for passing off.

Creating a valuable asset. A registered trademark is a defined, enforceable asset that can be licensed, assigned, pledged as security, or included in a franchise system. A trademark application is the first step in building that asset, and it creates a priority date that can be used to defend against later-filed applications.

Enabling monetization through licensing and franchising. A trademark application is a precondition to many licensing and franchising structures. Franchisors that expand under Alberta’s Franchises Act rely on registered trademarks as part of the licensed system, and licensors monetizing a brand through merchandise, co-branding, or content deals generally rely on registered marks to define and enforce the scope of the licence.

Protecting long-term brand equity. A trademark application, once registered, can be renewed indefinitely so long as the mark remains in use. This makes a trademark one of the few intellectual property assets that can protect brand equity across decades, unlike patents or copyrights that expire after a defined term.

Relevant laws and regulations

Trademarks Act, RSC 1985, c T-13. Canada’s federal trademarks legislation, which governs the requirements for a trademark application, examination, opposition, registration, and enforcement of registered trademarks.

Trademarks Regulations, SOR/2018-227. The federal regulations under the Trademarks Act, which set out filing procedures, the Nice classification of goods and services, fees, deadlines, and the mechanics of trademark application prosecution.

Franchises Act, RSA 2000, c F-23. Alberta’s franchise legislation, which requires specific disclosure about the franchise system including trademarks and rights to use them, and makes a trademark application particularly important for franchisors assembling a disclosure document.

Common legal issues

Not doing a trademark search. Filing an application without first conducting a trademark search increases the likelihood that your trademark will be rejected by CIPO. A trademark search can identify early red flags before investing in the trademark application.

Confusion with prior registered or pending marks. The most common issue in any trademark application is a confusion objection from the examiner based on a prior registered or pending mark. The Trademarks Act applies a multi-factor confusion test that considers inherent distinctiveness, length of use, nature of the goods and services, nature of the trade, and degree of resemblance. Addressing a confusion objection often requires legal argument, evidence, amendment of the goods and services, or negotiation with the prior rightsholder.

Descriptive, deceptively misdescriptive, or non-distinctive marks. A trademark application can be refused where the mark is clearly descriptive or deceptively misdescriptive of the character or quality of the goods and services, primarily a name or surname, or otherwise not inherently distinctive. Overcoming these objections may require evidence of acquired distinctiveness through use, which is often difficult to assemble for a new or recently launched brand.

Improperly scoped goods and services. A trademark application must describe the goods and services in ordinary commercial terms and classify them under the Nice classification system. Overly broad, vague, or improperly classified goods and services can lead to examiner objections, delay, and a narrower scope of protection than the applicant intended.

Opposition proceedings. After examination, a trademark application is advertised and becomes open to opposition by third parties. Oppositions are litigation-style proceedings before the Trademarks Opposition Board and can involve written argument, evidence, and cross-examination.

Use requirements. A registered trademark can be subject to non-use cancellation under section 45 of the Trademarks Act if the registered owner cannot demonstrate use of the mark in Canada in association with the registered goods and services during the relevant period.

Frequently asked questions

How long does a trademark application take in Canada? The timeline for a trademark application in Canada is generally measured in years rather than months. Examination alone can take well over a year from filing, and the full path to registration — through examination, advertisement, any opposition, and registration — can take longer depending on backlog, complexity, and whether the application is opposed.

What is the difference between a trademark application and a registered trademark? A trademark application is the filing; a registered trademark is the result after examination, advertisement, and any opposition have been resolved successfully.

Do I need to use the mark before filing a trademark application? No. A trademark application can be filed based on proposed use in Canada.

What happens if my trademark application is opposed? An opposition is a contested proceeding before the Trademarks Opposition Board. The opponent files a statement of opposition, the applicant files a counterstatement, the parties exchange evidence, and the Board decides whether the trademark application should proceed to registration. Oppositions can also be resolved through settlement, including co-existence agreements and amendments to the application.

Does a Canadian trademark application protect the mark internationally? No. A Canadian trademark application protects the mark in Canada only. International protection is generally pursued through separate national applications or through the Madrid System, with a Canadian trademark application used as the basis for foreign filings in many cases.