The prosecution of a chemical trade-mark in Canada can last anywhere from one to six years. Generally speaking, delays in the examination of the application and delays in the applicant starting to sell the products in Canada are the major reasons for a lag in the registration process. We therefore suggest the following strategies to reduce the time and expense necessary to register your chemical marks in Canada.
First, you or your trade-mark counsel should conduct a pre-filing availability search for the mark. This search will allow you to better assess whether the Trade-marks Office will raise any substantive objections to the mark (confusion or descriptiveness), and whether additional time and costs will be required to address those objections. We conduct an identical mark search with every request to file a new application. However, where the mark forms part of a global filing strategy, there are times that we have received instructions to file the application after the mark has already been chosen. To avoid unnecessary investment in a mark, it is best to obtain a Canadian availability opinion early in the decision-making process.
Second, foreign applicants should include a basis of home country registration and foreign use in the Canadian application. Normally, an applicant can only obtain a Canadian registration after they have used the mark in Canada. However, with a basis of home country registration and foreign use in the application, a foreign applicant will be able to obtain the Canadian registration without first having to sell the chemical products in this country. This basis is only available when the applicant has a home country registration (or pending application) for the identical mark, and has sold the products in any other country. This registration is every bit as strong and enforceable as a registration obtained from a Canadian use-based application.
Third, describing the chemical products in accordance with Canadian standards in the initial filing gives the application a better chance of proceeding through examination without any objections. Of course, identifying the Canadian standards in this field is not always an easy task. An examiner will evaluate the description of products to determine if they are in sufficient detail to enable a search for confusing marks, to determine if the mark is descriptive, and to determine if the description will give the applicant an unreasonably wide ambit of trade-mark protection. To reduce the chances of having an examiner object to the description of your products on any of these grounds, we recommend the following strategies:
1 – Before filing the application, ask a local trade-mark agent for his or her opinion on how to describe your products in accordance with Canadian standards.
2 – Identify the specific types of chemicals covered under the mark and their main areas of use. The following examples illustrate the level of specificity required by Canadian examiners.
- Surfactants for use in industrial applications
- Catalysts for use in the manufacture of industrial chemicals
- Methanol for use in fuel cells
- Chemical oxidants for use in wastewater treatment
- Chemical additives for fuel treatment
- Chemical compositions for waterproofing clothing
- Chemical preparations for use in the manufacture of cosmetics
- Chemical preparations for use in the removal of rust, dirt and grease
3 – Look to past recently approved applications covering the same products and adopt the same description. Due to the evolving nature of Canadian standards, applications that have been approved since 2009 are the most helpful.
4 – Look to any corresponding U.S. trade-mark applications for an accepted description of the products. Canadian examiners are not bound to follow the USPTO; however, Canadian and U.S. standards are similar in many instances, including in respect of chemical products.
In our experience, following the recommendations set out above and involving a Canadian trade-mark agent early in the process can significantly expedite the prosecution of the trade-mark application.