Trademark

Summary
  1. Legislation
    The law governing trademark protection in Canada is the Trade-marks act 1985
  2. Definition
    Trademarks are made of one or many words, sounds or design used to distinguish a person or organizations good or service
  3. Criteria
    There are 3 recognizable types of trademarks:

      1. Ordinary Mark
        An ordinary mark is a mark used to distinguish the goods and service of a person or organization from another.
      2. Certification Mark
        A mark which can be licensed to many people or companies to show that certain goods service meet a certain defined standard.
      3. Distinguishing Mark
        A mark which is about the shape of goods or their containers or a way of wrapping or packaging goods that shows they have been made by a specific individual or firm.

    However, the following restrictions are imposed to prevent certain marks from being trademarks:

      1. The Royal Arms, Crest or Standard
      2. Arms or crest of any member of the Royal Family
      3. Standard, arms or crest of His Excellency the Governor General
      4. Mislead consumers that goods sold, or performed is under royal, vice –general or governmental patronage, approval or authority
      5. Arms, crest or flag adopted at any time by Canada or any of its provinces
      6. The emblem of the Red Cross on a white background
      7. The emblem of the Red Crescent on a white background
      8. Equivalent sign of the Red Lion and Sun used by Iran
      9. Any territorial or civic flag or any national, territorial or civic arms, crest or emblems of a country of the Union
      10. Any scandalous, obscene or immoral word or device
      11. Any matter that may falsely suggest a connection with any living individual
      12. The portrait or signature of any individual who is living or has died within 30 years of their deaths
      13. Any badge, crest, emblem or mark adopted by Her Majesty’s Forces, University or Public Authority
  4. Membership
    √ Paris Convention for the Protection of Industrial Property
    X Madrid Protocol
    Canada is party to the Paris Convention for the Protection of Industrial Property. This provides that an applicant from any State party to the treaty shall be able to use its first filing date as the effective filing date in another State. Provided that the subsequent application is submitted within six (6) months
  5. Rule of Priority
    Canada practices a ‘First-to-file’ system, which recognizes the first person to file the mark
  6. Duration and Renewal
    A trademark once granted is valid for 15 years and can be renewed for another 15 years at the end of the previous term for an unlimited amount of time.
Procedure/Timeline
  1. Application
    Once the application is filed and submitted together with the appropriate fee, a filing date and an application number will be assigned.
    A formal filing acknowledgment and a proof sheer that list the information will be provided to the applicant.
  2. Examination
    An examiner will determine the application and determine if the mark can be approved and advertised on the Trade-marks Journal. Should there be any issues regarding the application, depending on the scale of the issue, the examiner will call or an examiner report will be sent to solve the issue.
    Should the reply fail to satisfy the examiner, a letter will be issued to inform the applicant that the application has been refused with a detailed explanation on the grounds in which the application is rejected.
    Should the applicant still want to proceed with the prosecution of the mark, an appeal can be made to the Federal Court of Canada.
  3. Advertising
    Once the application has been approved, it will be published in the Trade-Marks Journal, which is published weekly by the Canadian Intellectual Property Office.
    Any opposition to the mark can be made within 2 months from the application being published.
    Should there be no opposition to the mark in the 2 months, the application will then receive a notice of allowance.
  4. Opposition
    If the mark has been opposed, a statement of opposition will be issued to the applicant. The applicant then has the opportunity to contest the opposition by filing a counter statement within 2 months of the statement of opposition
    Both parties will then have the opportunity to file evidence and written arguments to support their claims. A submission for an oral hearing would also be available
    Should the opposition withdraw or result in an unsuccessful appeal, the application will move be allowed. However, should the opposition succeed, the application will be totally or partially refused.
  5. Allowance
    Should there be no opposition or the opposition has been resolved, the application will be allowed. A notice of allowance will be sent with instructions to pay a registration fee.
  6. Registration
    Once registration fee has been paid, the application will move from a ‘allowed’ status to a registered trademark.
Requirements/ Documents
The following information/documents are required to file a trademark application in Canada.

  1. The name and address of the applicant
  2. A representation of the trademark
  3. The goods or services that the trademark will or has been applied to
  4. Statement of intention to use
  5. Application fee
Documents
Downloadable Forms
Agents
Fee

Patent

Summary
  1. Legislation
    The protection and application of patent is governed under the Patent Act 1985
  2. Definition
    A patent refers to the letters patent for an invention. The invention can be:

      1. Product
      2. Composition
      3. Machine
      4. Process
      5. An improvement of any of the above
  3. Criteria
    A patent in Canada must have the following characteristic:

      1. Novelty
      2. Utility
      3. Inventiveness

    There are certain inventions that cannot be patented, which include:

      1. New plants matter
      2. Some types of computer games
      3. Medical treatments within the body
  4. Membership
    √ Paris Convention for the Protection of Industrial Property
    √ Patent Cooperation Treaty (PCT)
    Canada is party to the Paris Convention for the Protection of Industrial Property. This provides that an applicant from any State party to the treaty shall be able to use its first filing date as the effective filing date in another State. Provided that the subsequent application is submitted within twelve (12) months.
    Furthermore, Canada is a party in the Patent Cooperation Treaty which provides a unified procedure in filing patent application which can be filed to the World International Property Organization. The treaty allows for the applicant to extend its rights in patent application to other member country of the treaty. It is important to note that the an application under the PCT does not grant an international patent as that does not exist.
  5. Rule of Priority
    Canada practices a ‘First-to-file’ system, which recognizes the first person to file the patent which is not necessarily the first inventor.
  6. Duration and Renewal
    A patent once granted will last for 17 years (for patents granted prior to October 1, 1989) or 20 years (patents granted after 1 October 1989).
    A maintenance fee is due from the 2nd Anniversary of the filing date (patents granted prior to October 1, 1989) or the 3rd Anniversary from the day patent was issued (patents granted after 1 October 1989).
Procedure/Timeline
  1. Application
    An application for a patent can be applied by paper or electronically to the Canadian Intellectual Property Office. Once the application has been accepted for filing, a filing date and number is assigned to the applicant.
  2. Publishing
    The application will be made available for public inspection 18 months from the filing date or priority date.
  3. Request for Examination
    An application does not mean it will be automatically examined. Instead, the applicant is required to formally request for an examination and pay the examination fee before the examination process can begin. If a request for examination is not made 5 years from the filing date, the application will be lapsed and deemed abandoned.
  4. Filing Prior Art and Protest
    Once the application has been made available to the public, following application, any individual can raise questions about the application or one of the claims filed (prior art).
    Any individual can also file a protest against the granting of a patent. The protest will also be made available to the public.
  5. Response
    Should the examiner find an issue or objection with your application, an report called the ‘Patent Office Action’ will be issued to the applicant detailing all the objections raised by the examiner. A date of reply is also set on the report in which the applicant must comply by.
    All objections and issues must be overcome by the applicant within the time allocated either by amending the application, canceling some claims or adding new claims.
  6. Reconsideration
    Once the response has been given, the examiner will reconsider the application and will issue a second Patent Office Action. This may be a Notice of Allowance which informs the applicant that the application has been approved. On the other hand, it may also be another report which list down several unaddressed or new and arising objections from the response.
    If the examiner makes a final objection on the application, the applicant can appeal to the Patent Appeal Board to reconsider the application.
  7. Grant
    After the Notice of Allowance is issued, and the stipulated fee is paid, the patent will be granted.
Requirements/ Documents
The following information/documents are required for a patent application process in Canada.

  1. Applicant’s name and address
  2. Patent agent’s name and address
  3. Documentation describing the invention
  4. Filing fee
  5. Small entity declaration (if applicable)
  6. Formal Petition for Grant of a Patent
  7. Abstract of the invention
  8. Claim or claims to the invention
  9. Any drawings mentioned in description
  10. A biological sequence listing (if applicable)
  11. Appointment of a patent agent or representative (when required)

PCT National Phase Application
The following information/documents together with the filing fee are required to be submitting a non-provisional utility provisional application:

  1. Receipt from the International Bureau of copies of international application with any amendments to the claims, international search reports, and international preliminary examination reports may be accepted
  2. Payment of national fee
  3. Furnishing of a translation if the international application was filed in any other language other than English
  4. A copy of international application, except where not required by that Office (if necessary)
  5. Amendments, if any, to the claims in the international application. (Unless such amendments have been informed to the Patent and Trademark Office by the International Bureau, where a translation in English is provided should the amendments be made in another language)
  6. An oath or declaration of the inventor
  7. A translation into the English Language of any annexes to the international preliminary report. (If the annexes were made in another language)
Documents
Downloadable Forms
Agents
Fee

Industrial Design

Summary
  1. Legislation
    The law governing the protection and application of industrial design is Canada is the Industrial Design Act 1985.
  2. Definition
    Industrial design refers to the features of shape, configuration, pattern or ornament and any combination of those features.
  3. Criteria
    The key criteria in which the design must fulfill in order to apply for protection under the industrial design is that it must be a Design which is applied on a Useful Article.
    However, there are certain designs in which are not acceptable to be applied. Which are:

      1. Method of construction
      2. Idea
      3. Useful function of an article
      4. A mere substrate for carrying out an artistic work
      5. If the design is purely functional or utilitarian
  4. Membership
    √ Paris Convention for the Protection of Industrial Property
    Canada is party to the Paris Convention for the Protection of Industrial Property. This provides that an applicant from any State party to the treaty shall be able to use its first filing date as the effective filing date in another State. Provided that the subsequent application is submitted within six(6) months.
  5. Rule of Priority
    It is important in order to maintain the rule of priority that the design is filed within one year from the publication and/or sales of the design anywhere in the world.
  6. Duration and Renewal
    An application if granted will be made an exclusive right to the applicant from the date of registration.
    If the renewal fee is paid within 5 years of filing date, then the grant is valid for the remainder of the 10 years
Procedure/Timeline
  1. Formalities
    An application can be filed in paper or electronically accompanied by the fees to the Canada Intellectual Property Office. A filing date and an application number will be assigned to the applicant. The application will then be filed.
  2. Examination
    The application will be examined to consider if it complies with the regulations in the Industrial Design Act and Regulations. The CIPO will also classify the application according to the Canadian Industrial Design Classification Standard. A search will also be conducted to ensure the originality of the design by comparing to registered designs.
    Should any objections be raised by CIPO regarding the application, the examiner will notify the applicant within 8 months after issuance of the filing certificate. The applicant can respond by making the required amendments or submitting arguments. Should the amendments and arguments fail to satisfy the objections raised, a final report will be issued six weeks after receiving the response and no further action can be taken
    Should the decision not satisfy the applicant, a request for review can be made to the Patent Appeal Board.
    Failure to respond to the report by CIPO will result in the application deemed abandoned
  3. Registration
    Once all objections has been overcome, the design is registered in which and a certificate of registration will be issued to the applicant together with a copy of the application, a cover sheet summarizing the information about the design and a notice explaining maintenance requirements.
Requirements/ Documents
The following information/documents are required to file and application for industrial design in Canada:

  1. Name and address of the applicant
  2. Name and address of agent (if applicable, for foreign applications)
  3. Title identifying the finished article
  4. Description identifying features that constitute the design
  5. A drawing or photograph of the design and a description of the design
  6. Declaration that the design was not in use by any person
Documents
Downloadable Forms
Agents
Fee