Canadian Trademark Applications: Filing, Registration, Timing and Key Considerations

For businesses entering North America, trademark protection in Canada deserves separate consideration. Although some features resemble Korean practice, filing and registration procedures, descriptions of goods and services, use requirements and non-use cancellation rules differ.

In particular, Canada's trademark system was significantly reorganized in 2019, with the introduction of the Nice Classification and the Madrid Protocol. Accordingly, although Canadian designation through international registration is currently possible, overseas applicants still need to be careful about Canada's unique product and service description standards.

In this article, we will look at the Canadian trademark application process and period, as well as the creation of product and service names and major institutional features that require particular attention in Canadian trademark applications.

Canadian trademark applications generally proceed as follows: Application → Examination → Publication → Opposition → Registration

First, the applicant determines the trademark, product, or service he or she wishes to protect and submits a trademark application to the Canadian Intellectual Property Office (CIPO). In Canada, trademark applications can be filed even if the trademark is not actually in use, so companies that have not yet entered the Canadian market can prepare to secure rights by applying in advance for trademarks they plan to use in the future.

Once the application is received, the details regarding the method are confirmed and a substantive examination is conducted. The examination comprehensively examines whether there is a conflict with prior trademarks, the distinctiveness of the trademark, reasons for restrictions on registration under the Trademark Act, and the appropriateness of the designated good or service. If a problem is discovered during the examination process, an Examiner's Report is issued, and in principle, the applicant must respond by submitting a written opinion or amendment within six months. Conversely, if there are no additional issues, the application will proceed to the publication stage after approval from the examiner.

Trademarks that have passed the examination are announced in the Trademarks Journal, and third parties can file oppositions for two months from the date of publication. 

If there are no oppositions or the opposition process is concluded in the applicant's favor, the trademark is finally registered. Another feature of the Canadian trademark system is that trademarks applied for after June 17, 2019 do not need to pay a separate registration fee.

The examination period for Canadian trademarks is relatively long. Based on the current 2026-2027 work goals of the Canadian Intellectual Property Office (CIPO), some domestic trademark applications aim to provide initial examination results within approximately 14 months from the filing date. However, this does not mean the period until registration is completed, and the overall period may be longer if a response to the Examiner's Report or additional review is required.

Therefore, if you are planning to start a business in Canada, it is advisable to prepare for securing trademark rights in advance rather than applying for a trademark right before starting your business.

When applying for a trademark in Canada, an area that foreign applicants must pay particular attention to is the name of the designated good or service.

Canada requires goods and services to be described in specific, ordinary commercial terms.

Therefore, it is necessary to be careful about simply translating the names of designated goods used in Korea into English and submitting them. Even if an expression that covers a relatively wide range of products is recognized in Korea, in Canada it may be judged that the expression is not sufficiently specific as to what product or service it actually refers to.

One of the reasons why Canada's product and service names are more difficult than other countries is because of these specific requirements. Currently, Canada uses Nice Classification, and applicants can use the Goods and Services Manual to check expressions and classifications appropriate for their products and services. Using the expressions contained in the manual will help reduce problems that may arise related to the specificity of products and services.

In particular, when filing an individual application in Canada, it is recommended to review from the application stage whether the name of the product or service meets local standards. This is because if corrections are requested during the review process because the expression of the product or service is not appropriate, a separate response is required, and the overall trademark review period may be longer.

Therefore, in Canadian trademark applications, it is important to thoroughly review not only the selection of the trademark itself but also the expressions for designated goods and services before filing.

Another notable aspect of the Canadian trademark system is that a trademark can be applied for and registered without actual use.

In Canada, there is no need to prove actual use of the trademark at the application stage, and there is no procedure for submitting a separate Declaration of Use for registration. Therefore, it is possible for companies planning to enter the Canadian market to secure trademark rights in advance before starting business.

However, even after registration, the actual use of the trademark is important. In Canada, if a registered trademark has not been used for a certain period of time, a third party may request cancellation of registration due to non-use through the Section 45 procedure. Generally, trademarks can be subject to these procedures three years after registration, so it is recommended that trademark usage data in Canada be properly managed if the trademark is used in actual business.

Additionally, since Canada is currently a member of the Madrid Protocol, you can also designate Canada through international trademark registration. If a company wants to secure trademark rights in multiple countries at the same time, it is necessary to review whether international registration or direct application in Canada is appropriate, taking into account the purpose of the application and designated goods and services.

In this way, the Canadian trademark system is convenient in that applications and registrations can be made without proof of use, but it must also take into account the specific preparation of product and service names, long examination periods, and rights management according to actual use after registration.

Applying for a Canadian trademark is not a process that ends with simply selecting a trademark and submitting an application.

Before filing, search earlier marks, identify the goods and services requiring protection, and draft descriptions that meet CIPO’s requirements.

In particular, trademark examination in Canada can take a considerable amount of time, so it is recommended to prepare carefully from the application stage to avoid adding unnecessary time by correcting product/service names or other application details.

If you are planning to enter the Canadian market or need to secure trademark rights in Canada, it is important to review the appropriate method between direct application in Canada and international registration through the Madrid Protocol and establish an application strategy by considering the scope and expression of designated goods and services.

If you are preparing to apply for a trademark in Canada, please review products/services and prior trademarks from the pre-application stage to develop a strategy to secure stable overseas trademark rights.