Application preparation and filing strategy
This domain tests the mechanics of a compliant application and the commercial judgment behind scope, route and timing decisions.
What the application must contain
- Applicant's name and address, and a clear representation of the mark (colour claims, sound files, and multiple views for three-dimensional marks where relevant).
- Goods and services stated in ordinary commercial terms, grouped by Nice class with class numbers shown; fees are charged per class.
- Since 17 June 2019 no declared basis or use date is required, but entitlement under s. 16 and good faith (s. 38(2)(e)) still govern.
- Canada does not require specimens at filing.
Strategy decisions
- Scope: use the Goods and Services Manual wording where it fits; pre-approved terms reduce objections but may be broader or narrower than the client's actual business.
- Breadth versus vulnerability: over-broad specifications invite s. 30 objections and section 45 exposure; under-inclusive lists leave gaps. Consider parallel classes - software in class 9 alongside SaaS in class 42.
- Route: direct national filing, Paris priority within six months, or a Madrid designation. Madrid means one application and one fee in one currency, but exposes the client to central attack.
- Timing: file early. Entitlement under s. 16 turns on first use or first filing, and third parties may file while the client is still in development.
Worked example
A Canadian startup will launch a logo in three months and expand to the United States and the EU within a year. The recommendation: file now in Canada for the word mark and the design separately, docket the six-month Paris deadline for the US and EU filings, and decide later whether to use Madrid for further expansion. Filing the word and design separately preserves scope if the design is later revised; delaying risks a third-party filing and forfeits the earliest priority date.
Traps that cost marks
- Applicant name not matching the legal owner, or naming a trade name rather than the entity.
- Forgetting that descriptiveness is assessed in both English and French.
- Claiming colour in the representation without a corresponding colour claim.
- Missing the six-month priority deadline.