Top Question About Trademarks in Canada, Answered: Part 2

In part one of our blog, we outlined the common questions about the basics of filing for a trademark in Canada. Continuing with frequently asked questions about trademarks, we’re going to further outline some specifics about trademarks in Canada.

Does My Trademark Protect Me Around the World or Only in Canada?

Your Canadian trademark registration only protects you in Canada. If you are seeking protection in other countries, you need to file in those countries also. You may also wish to consider filing an International Trademark under the Madrid Protocol that allows you to file a single application that applies to a number of countries of your choice. There are pros and cons to filing individually in each country of interest versus filing an International Madrid Protocol. Speak with a registered trademark agent to determine which is best for you.

How Much Does It Cost to File a Trademark With WIPO?

The fees will vary depending on which countries you are seeking protection in and the number of classes of goods and services in your application. You can use the fee calculator offered by WIPO by clicking here.

Does Filing With WIPO Protect My Trademark in The U.S.?

It can, however you would have to designate the United States as one of the countries you are filing in. The United States also has a separate registration process that you can opt to use.

Can the Ownership of a Trademark Be Transferred to Someone Else?

A trademark is a form of property ownership. Trademarks can be transferred, sold, or bequeathed through assignment to someone else. You will want to inform the registrar about the ownership changes or if there has been a name change or a business merger.

What Are Some Trademarks That Are Not Allowed to Be Registered?

The Trademarks Act provides a detailed list with regards to the specifics of what can be a valid trademark. Each individual country has their own rules regarding what can be registered and what is not permitted.

The CIPO website outlines the following examples of trademarks that cannot be registered:

Names & Surnames

A trademark may not be registered if it is nothing more than a name or surname.An exception is if you can prove that your goods or services have become well known under the name or surname so that the word has acquired a second meaning in the public mind.

Clearly Descriptive Marks

You may not register a trademark that clearly describes a characteristic or quality of your goods or services.

For example, the words “sweet” for ice cream, “juicy” for apples, and “perfectly clean” for dry-cleaner services could not be registered as trademarks. All apples could be described as “juicy” and all ice cream as “sweet”; these are natural characteristics of the items. If you were allowed to register these words, no other apple sellers or ice cream vendors could use them to promote their goods, and that would be unfair. But, again, if you can establish that “Sweet Ice Cream” has become so well known that people will immediately think of your product (and no one else’s) when they read or hear these words, you may be allowed to register the trademark.

Deceptive Mis-Descriptive Marks

You cannot register a trademark that is deceptively misleading. For example, you could not register “cane sugar” for candy sweetened with artificial sweetener or “air express” for a courier service that uses ground transportation.

Place of Origin

You may not register a trademark that describes the geographical location where the goods or services come from. Allowing you to use such place names as your trademark would mean you are the only one who can use the geographical place name, and that would be unfair to others who trade in that place. For example, you could not register “Italy” for lasagna.

Also, you may not register a word that misleads the public into thinking that the goods or services come from a specific place when they do not. For example, you could not register “Paris Fashions” or “Denmark Furniture” as a trademark for goods or services if they did not come from there.

Words in Other Languages

You may not register trademarks that are the name, in any language, of the goods or services associated with your trademark. For example, you would not be able to register the word “gelato” (Italian for “ice cream”) in association with frozen confections; “anorak” (Inuktitut for “parka”) in association with outerwear; or “wurst” (German for “sausage”) in association with meat.

Confusing with a Registered or Pending Trademark

Beware of trademarks that are similar to another trademark that is registered or is the subject of a previously-filed application. If your trademark is confusingly similar to a registered trademark or a pending trademark, it will be refused.

Trademark examiners look at many things when they decide whether trademarks are confusing, including:

  • whether the trademarks look or sound alike and whether they suggest similar ideas
  • whether the trademarks are used to market similar goods or services

Let’s go back to the example of “North Pole” ice cream. Suppose another company were manufacturing and selling frozen-water products under the registered trademark “South Pole.” The public could potentially believe that “North Pole” and “South Pole” products are made and sold by the same company

A Trademark That Is Identical to or Likely to Be Mistaken

You may not register a trademark that is identical or similar to certain official marks unless you have permission from the organization that controls the mark. These official marks include:

  • official government designs (e.g., the Canadian flag)
  • coats of arms of the Royal Family
  • badges and crests such as those of the Canadian Armed Forces and the letters RCMP
  • emblems and names of the Red Cross, the Red Crescent, and the United Nations
  • armorial bearings (coats of arms), flags and symbols of other countries
  • symbols of provinces, municipalities and public institutions

A Scandolous, Obscene or Immoral Trademark

The subject matter that is scandalous, obscene, or immoral is also not allowed. For example, your trademark may not include profane language, obscene visuals, or racial slurs.

If you have more questions about filing a trademark in Canada or with the USTPO and Madrid Protocol, contact our trademark agents today for a free consultation.