Q. My Trademark Application Was Filed... Now What? A. The Examination Process
Once an application has been filed and processed within the Trademarks Office, the application is assigned a filing date and application number and posted on the Trademarks Register. Shortly thereafter, the application file is transferred to the attention of a Trademarks Examiner in order to assess the registrability of the application pursuant to Canadian legislation. The following general registrability criteria, among others, must be satisfied in order for an application to be registrable in Canada: [1]
- The proposed trademark, whether depicted, written or sounded, must not be descriptive or deceptively misdescriptive of the wares and/or services offered in association with the trademark or of the conditions of, or the persons employed in, their production or place of origin;
- The name, in any language, of any of the wares or services in connection with which it is used or proposed to be used;
- Confusing with a registered trademark;
- The mark must not be offend the section 9 or 10 rights of third parties (i.e. owners of Official Marks) or be prohibited by section 10(1) (i.e. must not be a denomination used to designate a plant variety pursuant to the Plant Breeders’ Rights Act);
- The trademark must not be a generic term; and
- The proposed trademark must not be “scandalous, obscene or immoral
In addition to the foregoing, the Trade-marks Act and the Olympic and Paralympic Marks Act outline further criteria and requirements for restricting the registrability of certain marks. Following examination (i.e. once registrability requirements are satisfied), an application is Approved and published in one issue of the Trade-marks Journal, thereby triggering the two month opposition period within which time any interested party may seek to oppose the allowance of your application for reasons such as pre-existing trademark rights. In the event that the application is unopposed, an Applicant does not receive notification until the Notice of Allowance is received, outlining the remaining requirements to register the trademark application. On the other hand, if opposition is encountered, the Trade-marks Opposition Board (TMOB) will provide notification and advise regarding the procedural requirements for responding to the opposition. Notably, a failure to respond to an opposition will result in the application being deemed abandoned by the applicant.
