In Canada, use is no longer required for filing or registration. In fact, filing bases have been completely eliminated. No specimens of use or statements of use are necessary.
Use is mandatory to maintain your trademark after registration. It is possible to cancel a trademark for non-use if the trademark has not been in use for 3 years after registration and there has been no good reason to justify non-use.
It’s perfectly legal for you to use your trademark without registration. However, if you are using a trademark that is similar to another name that was adopted before you adopted your trademark, you may be liable for trademark infringement.
To minimize the risk of choosing a trademark that’s similar to another name, you should do a trademark search of the Trademark Office database of the country where you plan to use your brand and of the marketplace (check on Internet for similar names usage).
In different countries trademark opposition process is different.
In the US, trademark opposition period is only 30 days, so you have to be pretty fast if you plan to oppose.
A trademark opposition in Brazil may be filed by an interested party within 60 days from the date of its publication.
In Canada, Australia and New Zealand one has to file a trademark opposition within a 2-month period.
A trademark opposition in South Korea may be filed by an interested party within 2 months from the date of its publication.
In the UK, an opposition period is 2 months but can be requested to 3 months upon a request made by a party that intends to oppose.
A trademark opposition in Japan may be filed by an interested party within two months from the date of its publication. Trademarks are published twice, first time right after filing and second time after registration.
In Germany, publication happens after registration. Opposition period is 3 months.
In the European Union and China, a notice of opposition must be filed within 3 months following the publication.
In India, anyone may oppose registration of an Indian trademark within 4 months after publication.
Trademarks can last forever if they are renewed on time. Keep in mind you will have to continue using your trademark to keep it in good standing.
In the US, you must renew your trademark every 10 years. The 10 year term is counted from the registration date. In addition, between the 5th and 6th year after the registration date, you must file an “affidavit of use” to keep the registration alive.
In European Union, Germany, the United Kingdom, India and Australia, you have to renew your trademark every 10 years. The 10 year term counts from the application date.
In China, trademarks have to be renewed every 10 years. The renewal period is counted from the date of registration.
In Canada, a trademark has to be renewed every 10 years (the renewal period was changed from 15 to 10 years in June of 2019). The 10 year term counts from the registration date.
Here we rank the countries where we file from the fastest to the slowest.
1. Germany is the fastest country and overall champion. It takes 1-3 months, on average to register a trademark in Germany. With accelerated examination, most trademarks register within a month. So this is a clear champion in terms of speed. Sometimes Germany can be a little unpredictable as it can take a month for one trademark and 3 months for another trademark.
2. One of the fast and most predictable in terms of timeline is the United Kingdom, where it takes about 3.5-4 months from filing to registration. Added bonus is low government fees.
3. In the European Union, the registration process is about 6-7 months. Not so bad, but the government fees are very high. If your application is filed using “fast-track” method, then the whole process takes about 3.5-4 months. We always EU applications using “fast-track” so European Union is very comparable to the UK (maybe a little slower).
4. It takes about 4-8 months to register a a trademark in Mexico but it can be somewhat inconsistent in terms of the time (sometimes it takes 4 months and sometimes more than 8 months).
5. You will have to wait for about 7.5-8 months to register a trademark in Australia unless we get an objection. Usually most trademarks register within a year or less.
6. In China, it takes 9-12 months to register a trademark if there are no complications. However, if there is an objection and we have to appeal, registration will be delayed by 8 months. China is determined to make the overall registration process faster, so it’s possible that in 2020 this timeline will be shorter.
7. India is similar to China in terms of timeline. On average it takes 10 months to get a registration certificate if there are no problems during the process.
8. It takes a minimum of 12-14 months to register trademark in the US. If there are office actions (objections from the Trademarks Office), then registration will be delayed. It’s not uncommon for a registration to take a year or longer.
9. In Japan, it may take from 10 to 14 months for a trademark to register.
10. In Brazil trademark registration process takes on average 12-18 months. It’s a pretty long time.
11. The last place is unfortunately taken by Canada. It takes 36-42 months to finish the registration process. If there are objections the overall registration process takes even more time. It’s painfully slo-o-ow. Don’t ask us why. We don’t know the answer. We feel your pain though. Hopefully, as Canada joined Madrid protocol things will improve. We don’t know if and when they will improve. Ever since pandemics began the whole process delayed even more (other countries haven’t been affected so badly).
When you file your logo in black and white, you may use your logo in any color. When you file your logo claiming color, you must use your logo in those colors.
A color claim is a limitation, which otherwise confers on the owner the exclusive right to use the mark in any color. Therefore, a color claim narrows down the protection for a mark and it is usually advisable to include such a claim only when a particular color is considered to be an important and essential feature of the mark.
In addition, a trademark logo in color is usually not the first trademark that should be filed. If an applicant files a first trademark, it’s best to file a word mark in standard characters. Such a trademark will allow the owner to use its trademark logo in any font and style. After a word mark is filed a trademark logo should be considered for filing. Of course, it may be filed at the same time as the word mark if finances allow.
Only after the word mark and the logo in black and white are protected, should a logo in color be protected if necessary.
What’s the bottom line? Unless color is an essential element of your trademark logo, don’t file in color.
Read our article for a full discussion about color claims.
Use is essential for the maintenance of your trademark. In many other countries, you need to use the trademark after registration to make sure it’s not challenged and canceled for non-use. You must use your trademark within 3 years after registration.
However, you can now register your trademark Canada without proving any use (June 17, 2019 changes). Use is no longer necessary for registration.
In Canada, using the trademark for goods (products) is simply selling your products with your trademark being displayed either on the actual products or on their packaging during the sale.
Using for services is simply advertising of the mark in Canada and the services must be performed in Canada, or be available to be performed in Canada.
To open in a new tab, click: What does “using a trademark in Canada” mean?
Note: Declarations of use have been eliminated. Currently, once an earlier filed trademark is allowed, the final registration fee needs to be paid. For trademarks filed after June 17, 2017, no registration fee will be necessary.
