Completing a Canadian Trade-mark Application

Trademark Application Online

The following article will help you complete your Canadian Trademark application online. It is recommended that you still consult a trademark agent or lawyer to help you prepare to ensure that the process goes smoothly.

How to Complete A Canadian Trademark Application Online  

Note: You can download a template of the CIPO Trade-mark application here: application registration trademark canada

You can also complete the following questionnaire in Google Form to assist with preparing the trademark application online so we can fill out your application on your behalf.  However, drop us a quick email to let us know you have done so at [email protected].   The following is a Trademark Application Online Checklist.  

Trademark Search

Prior to preparing the trademark application online, it is a good idea to do a trademark search.  A formal search can be done by a company like Thomson which charges at least $400. However, you can do preliminary searches on the internet.

Privacy

1. Privacy Obligations

Privacy Act – CIPO abides by the Privacy Act meaning that they only collect information for the purpose of the Trade-mark application. It also means you can access that information. You can read their privacy policy here: cipo.ic.gc.ca/notice

Name the applicant and their post office address or principal office address if applicant is a corporation.

The application is addressed to The Registrar of Trade-marks, Gatineau, Canada. The applicant has to provide their full address of their principal office or place of business.

The applicant ___________________________________________ whose full post office address of its principal office or place of business is _________________________________________________________________________________________________________________________________________________________________________________________________________ applies for the registration, in accordance with the provisions of the Trade-marks Act, of the trade-mark identified below.

Trademark Identification

3. Name and Describe the trade-mark

The trade-mark is the word(s) (or is shown in the attached drawing) ___________________________________________________________________.

The applicant disclaims the right to the exclusive use of ___ apart from the trademark.

An identification of the trademark, and if the trademark is not be registered merely as a word or combination of words, we also need a picture, drawing or specimen of the trademark in a tiff design or word mark (colour design or black and white). If colour design, should also provide copy of black and white to CIPO and we explain the colours.

• Design should be provided in tiff format.
• Get proper spelling.
• Better to register in black and white b/c can use option of other colours but if they want something distinctive, then they can use other colours.
• Single word or slogan
• Design
• collateral mark or main mark

Wares/Services

4. List all the merchandise or wares associated with the trade-mark.

• The trade-mark has been used by the applicant in association with all the specific wares listed hereafter, and the applicant requests registration in respect of such wares. The trade-mark has been so used in Canada in association with the general class of wares comprising the following specific wares _____________________________________________________________________________________________ since ____________________________________ and in association with the general class of wares comprising the following specific wares_________________________________________________________________________________________ since ____________________________________.

5. Describe all the services. Note: you will need to be very specific and stated in ordinary commercial terms. eg. instead of cases, say camera cases

• The trade-mark has been used in Canada by the applicant in association with all the specific services listed hereafter, and the applicant requests registration in respect of such services. The trade-mark has been so used in Canada in association with the general class of services comprising the following specific services _____________________________________________________________________________________________since _____________________________________ and in association with the general class of services comprising the following specific services_______________________________________________________________________________________since ____________________________________.

Trademark Use

6. The applicant is required to confirm use in association with the wares and services.

• The applicant is satisfied that he or she is entitled to use the trade-mark in Canada in association with the _________________________________________________ described above.

Applicant

7. The name of the applicant. The name stated in the application as the applicant must be a legal entity. A legal entity can function as a legal entity, sue or be sued. Legal entities are corporations, partnerships, associations or joint ventures. You will need to have a lawful association between both of you. If you do not wish to incorporate, you can be a partnership, association or in a joint venture but you will need an agreement between both of you for this.

 

Provide us with the name of the applicant (individual, corporation or lawful association).

If corporation no problem but could be a problem with partnerships. use it themselves or stick it in name of holding company? What is structure

The full name and post office address of the applicant, including the jurisdiction of incorporation (provincial or federal, or foreign country or state), if the applicant is a corporation, and the names of the partners, if the applicant is a partnership.

Predecessor

If the applicant’s rights derive from some other person, the names of all predecessor(s)-in-title, and complete particulars of use of the trademark by the predecessors-in-title, and details of the assignment or other transfer of title to the applicant.

8. Address of Principal Place of Business.

The address of the office or place of business must be in Canada (or the address of a person or firm who is the representative of service must be provided).

9. Provide the email address for the main contact for the Trademark application.

10. Has the mark been used in commerce or will you be using it in the future?

Date of first use

11. If you have started using the trademark in the market, what was the first date of use (or making known)?

Please provide us with confirmation of any use of the trademark in Canada, and if used, the date that the mark was first used in Canada in association with the sale of transfer in possession of the wares, or used or displayed in association with the performance or advertising of services.

Please provide us with a description of the manner in which, and the place where, the trademark was first used, and send us several (at least four) specimens of use (e.g. labels that are affixed to the wares at the time of sale, or packaged in which the wares are sold, or, in the case of a service mark, sample advertising material.

• Specimens – Keep originals samples/specimens and use in records (for merchandise) and good for me to keep as well to evidence the use (can put as early as and can be changed).
• Wares – best evidence is the invoice
• Advertising is a receipt for service (flyers, ads)
• Details of use
• Whether applicant used it or someone else

Foreign registrations

Provide any information on foreign trademark registrations online.