One of the most frequently asked questions by those newer to the trademark world is “How long will it take to get my trademark registered?” Frustratingly, as with so very many things in the legal world, the real answer is “It depends”. There are genuine reasons why this should be so. Innumerable factors can impact your application to register a trademark and no promises can be made as to the time that your specific application will take. However, there are some indications that you can use to create a general guideline of what you might expect in Canada.
Clearing your trademark:
This is arguably the most important step in the trademark application process and the most difficult to ascertain a time frame for. How long it will take to clear your proposed mark for use will depend on your strategy for the eventual scope of use of the mark. For example, if you intend to use your Canadian trademark registration as the basis for an international trademark application through the Madrid system administered by the World Intellectual Property Office (WIPO) in Geneva, then it would be advisable to conduct clearance searches for the trademark in all of the regions in which you intend to do business at the outset.
How long it will take to create and clear your trademark for a Canadian trademark application depends on a number of factors - whether you do it yourself or hire a trademark attorney (recommended!), what kind of data sources or services you use, the industry you are in and how in-depth your search goes. The process of creating a new brand and clearing it for use or registration can take anywhere from a couple of weeks to a couple of months.
The Canadian trademark application process:
The trademark application process itself is a little easier to define in terms of time. There are a number of steps in the process and this is usually where people see the benefits of an experienced trademark attorney. You can find a roadmap to the process in the Canadian Intellectual Property Office here.
Research completed by TrademarkNow both last and this year analysed the times taken to successfully complete the trademark registration process in a number of regions, including Canada:
Last year, one quarter of applications took 450 days or less to process successfully, making this the minimum time frame you could expect. The average time is 750 days or under (or almost 2 years) and another quarter take almost 3 years. It is however, worth bearing in mind that these averages were assessed over 10 years.
A decade is a long time in an increasingly technological world and many Intellectual Property Offices are implementing increased digitisation and more effective processes to allow them to reduce the time taken to see a trademark from application through to registration year on year.
From the 2018 perspective, the processing times for Canada have remained within a fairly consistent range since 2003. This hides the fact the number of trademark applications has more than doubled over the same period. One could say that the Canadian office has maintained its latency while doubling its throughput. It will be interesting to watch the effects of applications from the Madrid System at WIPO as Canada becomes a fully active participant!
There are a number of other factors that will impact the speed of your registration. Very many of the problems with a trademark application will be administrative in nature and the bulk of the remainder will encounter issues with opposition. The applications that proceed successfully to registration faster will have a flawless application and will be correctly cleared for registration so as not to be the recipient of an opposition.
The services of an experienced trademark attorney can do much to mitigate against these factors. The assessment of potentially conflicting existing trademarks is an art form depending as it does on the industry in which you operate, the strength of your mark and in some cases, the litigiousness of your potential opponents. The selection of goods and services for your proposed trademark is critical and while the application forms are not overly complex, the devil is in the small details. Much of the expected time frame to registration is in your hands and for applications that are time sensitive, the best advice is to ensure you get the fine details right first time!