Trade-Marks
3. Getting Started
(c) Prosecution of a Trade-Mark Application
Once an application has been filed with the Trade-marks Office of the Canadian Intellectual Property Office, it undergoes a thorough review by a trade-marks Examiner to make certain that an applied for trade-mark is registrable under the criteria specified in the Trade-marks Act. This procedure includes conducting a search of all existing trade-mark registrations and applications of record to determine whether there are any prior confusingly similar trade-marks for which registration has been made or applied for. This search is essentially the same as the minimum pre-screening search that our firm recommends be carried out prior to filing. Approximately 3 to 6 months after the application is filed, the Examiner will issue a report notifying the applicant of any objections, and providing an opportunity to respond. The response, typically prepared on your behalf by your trade-mark agent, may include amendments to the application and/or written arguments attempting to overcome the Examiner's objections. Failure to respond to the Examiner's report will result in the automatic abandonment of the application. The Examiner will consider the response filed, and decide whether or not it is satisfactory. If the objections have not been overcome, the applicant may be granted another opportunity to respond, and there are further avenues for appeal of the Examiner's decision. If the Examiner has been satisfied, the application will be "approved for advertisement". Then approximately 6 weeks later, the trade-mark will be advertised in the Trade-marks Journal (a publication subscribed to by many registered trade-marks agents, and also available online at the CIPO trade-mark website). Interested parties will then have two months in which to indicate their intention to oppose the application. An opposition is a complex adversarial proceeding involving the filing of evidence, written arguments, and optionally, oral submissions. If there is no opposition by any interested third party, or if an opposition is decided in your favour, your application will be issued a Notice of Allowance. After receiving the Notice of Allowance, it is necessary to pay a registration fee and, if the application was originally based on proposed use, you will be required to provide a declaration that you have started using the trade-mark since the filing date of the application.