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Oh Canada social trademark thy brands am Andre mink of the founder of trademark factory Canada has gone through some significant changes in its trademark laws lately and is now closer to all the rest of the world dust trademarks and in this video I'm going to share how to trademark a brand name and logo in Canada first of all if you or your company are not in Canada and you have a trademark application or registration in your home country if you are plenty to protect your brand in more than five other countries know that you may now include Canada in your Madrid trademark application this is new as Canada has for years refused to join the Madrid system and now he's finally a member yay also if you already have your International Madrid registration you can now add Canada through the subsequent designation mechanism this is basically how you can expand the geographical scope of your International registration without having to go through the whole process from scratch okay with Madrid applications out of the way and by the way I have several other videos that explain the Madrid system in more detail now let's talk about registering your trademark in Canada directly now there are a few things you should keep in mind first of all aside from the brand owner the only persons authorized to communicate with a Canadian Intellectual Property Office are registered trademark agents being a lawyer or a patent agent or just someone who knows a lot about trademarks is not good enough you need to be properly recognized and have a trademark agent license now just to give you some context most lawyers in Canada are not licensed trademark agents now as much as I despise the idea of licensing of government licensing things are what they are so it's just something you should accept as reality now if you don't want to file and prosecute your trademark application yourself you need to have a registered trademark agent do it for you okay second the trademark you process in Canada now takes crazy long time usually more than two years now it used to be that they would examine your trademark application within six months after filing then it became eight then nine then 11 now it takes over a year for them to look at most applications for the very first time it just sits there and I know it's super frustrating but that's what it is now expect your application will take forever to go through and start sooner rather than later okay the process itself is very much like trademark registration in most countries now first you should conduct a search to see if your brand is trademark Abel now in theory it's optional Canadian Intellectual Property Office is not gonna require you to produce any evidence that you have done your homework that you have done your searches but why would you start a two-year process without having a clue as to whether your trademark is even registrable it doesn't make any sense and I don't mean just a knockout search when you're searching for identical trademarks only I mean do a proper comprehensive search to make sure you're not wasting your time and money okay then you would file your trademark the government fees are now three hundred and thirty Canadian dollars for the first class of goods and services in which you file your trademark plus one hundred Canadian dollars for each additional class now for example if you file your trademark in four classes you will pay six hundred thirty Canadian dollars as filing fees three hundred plus three times one hundred and yes Canada has finally adopted the NYSE classification so all applications need to have goods and services grouped according to the official classes by the way we've released several videos on classes and our working and a few more so if you want to know more about how trademark classes work make sure you subscribe and check out our other videos now most trademark applications are filed online through C polls website and then once the examiner finally reviews your application for the first time they will either mail you a notice of approval or an office action and I mean mail by paper now we receive dozens and dozens of envelopes every week and then we scan and shred them you would think that they'd have figured out a way to post these documents online by now but hey they're gonna tell you how much they care about saving the environment and text the crap out of you and then they're gonna send you tens of thousands of letters that could have easily been sent by email but I digress if you receive the notice of approval you'll have a chance to review it to make sure all details are correct before your application gets published in the trademarks journal for opposition purposes and if you receive an office action you will have six months to respond to it by fax or by mail now by email not through an online form by fax or by regular mail now the next time you'll hear from the examiner will be many many months later and then you have another six months to respond and so on now assuming the application eventually gets published anyone will have two months to oppose your trademark application or request a three months extension of time to do so if your application is opposed then there's a whole lot of procedural back-and-forth that you would need to go through including in certain cases oral hearings and if you win the opposition or if nobody opposes your application within this period your trademark application will be allowed and registered yay the funny thing here is that while sepal sends all of their notices and office actions by regular mail only document you would actually want to receive as an original would be the trademark registration certificate but guess what it's the only document they send you as a go figure now I thought it was kind of dumb so what we do here a trademark Factory is we print these PDFs out we put them in a nice custom frame and we mail them to our clients I mean after all this is the moment they've been waiting for two freakin years and we want them to have something tangible to celebrate over not some PDF file okay once your trademark registers in Canada you will need to renew it in ten years and then every ten years after that so that's how you trademark your brand name and logo in Canada I hope this gives you a pretty good idea of the process and just so you know we can help you with the entire process from start to finish for a single all-inclusive flat fee risk-free guaranteed not me personally I'm a registered Canadian trademark agent our all-inclusive flat fee is not a bait-and-switch offer to get our foot in the door and then milk you as an ATM as the trademark you process unfolds it covers everything from filing to registration except for our positions and by the way yes we do have a package that covers our positions as well and yes if you're serious about your brand and your business you will find our fee very much manageable and affordable just don't expect some silly offers where they say you can get your brand trademarks for a couple hundred bucks and if we fail at getting your trademark registered in Canada you will get a full refund no matt
Thanks for your comment Vernon Strawther, have a nice day.
- Rudolf Homiak, Staff Member
hello hello welcome back to my channel my name is zarina business lawyer by day and raptors bandwagoner during playoff season so not this year today's episode's super exciting we're actually going to be talking about how to trademark a business name and logo here in canada but we're going to be doing it a little bit differently we're actually going to look at the trademark application filed by vanessa bryant on behalf of kobe bryant and hopefully by the end of this video you're going to be able to get tips and ideas of how to file your own trademark application so that you can continue to protect your brand and continue to protect the legacy that you've worked so hard to create let's go the first step in filling out trademark applications is deciding which things should be trademarked just a quick refresher like what is a trademark a trademark is uh any word sound phrase basically anything you have that can distinguish you from anybody else in the marketplace so people used to think that trademarks were just words and logos but now actually it's been expanding so even tastes and there's this thing called distinguishing guises and basically if you can just prove to the intellectual property office that there's this one thing that you do that basically anyone who thinks about it will be like yep that's that's that company and if you can prove that then you get that trademark and this is actually used quite often in clothing and accessories so who knows maybe we might find a distinguishing guys for kobe's the cool thing with trademarks is their property rights so it's not like when you register a business name and a provincial registry like that's more so a legal compliance thing because a trademark is a property right you can actually will it to someone you can you can make it last for generations you can transfer it to someone else and therefore if you actually are able to register a trademark it increases the value of your company now let's turn to the trademark applications filed by copy brian's estate one of the blogs that i follow it's a fashion law blog and one of the articles was really interesting because it was talking about how kobe bryant's date filed an application for a lot of trademarks and if you believe the rumors it might be that there is an apparel line that is on the way actually there is another lawyer another law firm that looked into these applications and gave us an idea that there might be clothing there might be websites there might be games coming up soon we don't know but what's cool is if these applications actually get approved it gives kobe bryant llc the applicant sorry so this kobe bryant llc is the corporation that was started by kobe bryant's estate if this gets approved then that corporation will be able to get the exclusive rights to continue on kobe bryant's legacy which is pretty cool so what does that mean for us it's fairly similar actually here in canada if you file a trademark application and it actually you know gets approved by the canadian intellectual property office then you get the exclusive right to be able to use it in canada for up to 10 years and then it's renewable after that but there are some exceptions again and it's that basically like if you abandon it like you stop using your trademark the intellectual property office deems it to be have been abandoned so you lose that exclusivity because they're like well if you're not gonna protect it so why should we protect it you know like why should we give you that right now most businesses when they register they start with registering their work sometimes it's their business name sometimes it's a phrase like a slogan for example but when we look into trademarking words i want you to think about it in three different tiers now the first tier is something that's more likely to get approved so these are names that you just make up for the sake of this video where i'm just going to say kobe's trademark applications but really when i say that um please think about it as kobe's estate trademark applications okay cool so if you look here at his trademark application we'll see an application for mambasita which we know is his nickname for gigi so for us if you have a brand name that's just totally made up so for example global like complete so just from a branding perspective if we have a name that's totally made up it's easier to get that through the intellectual property office and get it registered so the second tier is registering business names that are personal names so personal names they're not necessarily impossible to trademark they're just a lot harder um so the cpo doesn't necess doesn't always like trademarking those things but if you can show that there's enough of a reputation sipo's more likely going to approve the registration of that trademark so if you look here at kobe's applications so from 1998 like you can see like his super business-minded you can see that he's trying to register his name and then you see this little note about living person got consent so it's the same thing here in canada if the person is alive and you're trying to register that name of course sipo would want to make sure that there's actually consent that that person has consented to it because obviously they don't want to be trademarking something that the other that the person who actually owns that thing doesn't want it to be trademarked so and then if you look here 2020 so there is another application for kobe bryant's name and again if it was in canada because it has a reputation it's likely going to go through you know like kobe bryant is a legend he's in the hall of fame so it's likely that this personal name will also go through if kobe bryant was canadian and now we're off to tier number three so this is like extra hard level if you really want to go for it generic names so you can trademark generic names like names that you can find in a dictionary but it's super super super impossible not impossible it's just super super super hard we mentioned already that trademarks are property rights so of course people wants to balance the right of other people who to be able to use certain words right like we don't want to have to go to court every single time someone uses a word that can be found in the dictionary but it's not necessarily impossible so as long as the name is not related to the goods or the services that the brand is actually you know promoting in the marketplace then that's generally okay and that's why apple the company that creates the macintosh computer that creates our ipods it was able to be registered here in canada because it's not you know computers aren't necessarily related to apple the fruit but snapple apple couldn't register the apple part in their name because snap apple creates fruit juices and an apple is a fruit so if you look here black mamba the application it had nothing to do with snakes and snake products so that was okay it'll be the same thing here in canada what will be interesting here is the application for mamba because mamba is just a generic word for snake so we'll see if it's going to be possible hear
Thanks Vetturix your participation is very much appreciated
- Rudolf Homiak
About the author
I've studied incomes policy at Rocky Mountain University of Health Professions in Provo and I am an expert in aesthetics (outline) / philosophy of art. I usually feel hyper. My previous job was water pollution control inspector I held this position for 17 years, I love talking about deltiology (postcard collecting) and art collecting. Huge fan of Emily Browning I practice wakeboarding and collect dolls.
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