Our Services at a Glance
Canadian and U.S. trademark clearance searches. Before filing a trademark application, it is prudent to search the Canadian Trademarks Database to assess whether your proposed trademark is confusing with any pending or registered marks. You should also consider searching trade names registered at the provincial or national level, as these are often used as unregistered trademarks. Engaging us will help ensure the search is properly scoped and that the results are assessed in light of Canadian trademark law before proceeding with an application.
Preparing and Filing Your Trademark Application Once engaged as your trademark agent, we prepare a draft Canadian trademark application and review the key details with you prior to filing. These include the identity of the applicant and the goods and services with which the trademark has been used or is intended to be used. After confirmation, we finalize and file the application with the Canadian Intellectual Property Office (CIPO). Shortly thereafter, CIPO issues an official filing notice confirming the application number and filing date, together with a proof sheet summarizing the application details. Examination of Your Trademark Application Following filing, the application enters the examination queue. Currently, examination typically occurs approximately 16 months after filing where pre-approved goods and services are used, or 30 months where they are not. The examiner will either approve the application or issue an Examiner’s Report setting out any objections. We review the objections with you and respond by filing legal submissions, amendments to the application, or both. If the examiner is satisfied, the objections are withdrawn and the application is approved. If not, further examination reports may issue. Advertisement in the Trademarks Journal Once approved, the application is advertised in the Trademarks Journal. From the date of advertisement, third parties have two months to oppose the application by filing a statement of opposition with the Trademarks Opposition Board. Opposition proceedings are relatively uncommon in Canada, arising in only a small percentage of applications, but they involve formal, litigation-style procedures before the Trademarks Office. Registration If no opposition is filed—or if the applicant is successful in any opposition—the application proceeds to registration. Term and Renewal of Registration A Canadian trademark registration is valid for 10 years from the registration date and may be renewed indefinitely in successive 10-year terms, provided renewal fees are paid. Continuous use of the trademark in Canada is important to maintain enforceability and to guard against non-use challenges. Ready to get started? Contact us for a complimentary and confidential initial consultation.
International Trademark Filings for Canadian Applicants. Madrid Protocol Applications. If you anticipate offering goods or services outside Canada, it is often advisable to seek trademark protection in key foreign jurisdictions. Registering your trademark abroad helps ensure that you can enforce exclusive rights in those markets and reduces the risk of third parties adopting confusingly similar marks. One efficient route to international protection is through the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (the Madrid Protocol). The Madrid Protocol is an international framework designed to streamline multi-jurisdictional trademark filings and facilitate global commerce. Administered by the World Intellectual Property Organization (WIPO), the Madrid Protocol allows a trademark owner to file a single international application, based on a Canadian application or registration, and to designate protection in multiple member countries. This centralized system can offer meaningful efficiencies in filing, record-keeping, and portfolio management when compared with filing separate national applications in each jurisdiction. We regularly advise Canadian applicants on whether the Madrid Protocol is an appropriate strategy and coordinate both Madrid and national filings to ensure trademark protection aligns with the client’s commercial objectives.
DRAKE MARKS
Section 45 (Non-Use) Proceedings. Section 45 of the Trademarks Act provides a streamlined procedure to remove trademarks from the Register where the registered owner cannot show use of the mark in Canada during the preceding three years. We represent both challengers and registered owners in section 45 proceedings, offering practical, cost-effective advice at every stage. Our services include: Strategic assessment of whether a registration is vulnerable to non-use Commencing and defending section 45 proceedings Preparing and reviewing affidavit evidence of trademark use Advising on acceptable evidence of use and excusable non-use Preparing written submissions and representing clients at oral hearings Advising on appeals to the Federal Court Section 45 proceedings are an efficient way to clear unused trademarks from the Register or to defend valuable registrations. Our focus is on protecting your commercial position while managing cost and risk.