Trademarks

Riches McKenzie and Herbert LLP has numerous professionals who are registered Trademark Agents authorized by Industry Canada to practice before the Canadian Trademarks Office.

In addition through our longstanding relationships with associates around the globe, we are able to assist our clients in securing trademark rights not only in the United States Trademarks Office, but globally.

Practical Advice

Although the Canadian Trademarks Act awards trademark rights between competing applications on the basis of the earliest of the use or filing dates, the Trademarks Office has adopted a first-in first-out approach to examination. As such it is advantageous for an applicant to apply for registration of trademarks in Canada as early as possible, even if extensive use of the mark has occurred, as this may avoid the necessity of having to oppose a previously filed third party application which alleges a later use date.

It is possible to claim priority to a foreign trademark application first filed in a foreign country where the applicant has a real and effective commercial establishment, up to six (6) months earlier.

Trademark Requirements to File in Canada

The following information is required to prepare and file a trademark application in Canada. A Power of Attorney is not required, nor is it necessary to have the applicant execute the application.

  1. APPLICANT'S FULL NAME AND ADDRESS (In the case of a corporation, indicate name as it appears in the Charter.)
  2. APPLICANT'S PREDECESSORS (if applicable, and in successive order).
  3. The trademark to be registered.
    1. For word marks - Please provide the word to be registered.
    2. For design marks - please provide a clean copy of the entire trademark as well as a copy as .pdf or bitmap from which we can make drawings.
    3. For sound marks - please provide a recording of the sound in CD or DVD format.
  4. If the trademark is in colour, please advise us if the applicant claims colour as a distinctive feature of the mark and if so, please advise of the colour scheme that you wish us to use.
  5. A list of wares and services. Please note that these must be in ordinary and specific commercial terms.
  6. BASIS OF APPLICATION:
    1. use in Canada - see paragraph 7
    2. use and application/registration in the home country - see paragraph 9
    3. proposed use - a declaration of use confirming use of the trademark in Canada is required before registration.
  7. THE DATE OF FIRST USE IN CANADA with each class of wares and/or services or advise that the applicant or a licensee intends to use the mark in Canada. If the application is filed based on proposed use, a declaration of use will be required to register the mark on this basis.
  8. APPLICATION/REGISTRATION IN THE COUNTRY OF ORIGIN. If the application is to be based on an application or registration in the home country, and use in any country, please provide the COUNTRY, DATE AND NUMBER OF APPLICATION OR REGISTRATION, COUNTRY OF USE, AND STATEMENT OF WARES/SERVICES. Before approval, a certified copy of the home registration, and an uncertified English or French translation, must be filed. We require a list of the wares and services sold in the country.
  9. PRIORITY CLAIM - provide COUNTRY, DATE AND NUMBER OF APPLICATION and the LIST OF WARES/SERVICES of the priority application. A copy of the priority document is not required.
  10. If the trademark includes a word which is not an English or French word, please advise if there is an English or French translation of the word or if it is a coined word or term.
  11. If the trademark includes letters in a language other than English or French, please provide us with a translation and a transliteration of all such words or letters.

TRADEMARK APPLICATIONS MAY BE PREPARED
AND EXECUTED IN THIS OFFICE WITHOUT THE
APPLICANT'S SIGNATURE AND A POWER OF
ATTORNEY IS NOT REQUIRED

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