Trademarking your app or SaaS name in Canada: search, classes and timing

Founders often find out about trademark law the hard way: a cease and desist letter a few months after launch, or an investor’s diligence question about who owns the product name. A little work before launch avoids most of it.

This post is general information, not legal advice.

What a trademark protects

A trademark is a sign, such as a word, logo or slogan, used to distinguish your goods or services from others’. For a software company, the product name, the company name used as a brand and the app icon can all function as trademarks.

Under section 19 of the Trademarks Act, a registration gives the owner the exclusive right to use the mark throughout Canada for the goods and services in the registration. Without a registration, you may have rights from use in the areas where you’ve built a reputation, but proving them is slower and more expensive.

What doesn’t give you rights

• Incorporating. A corporate name approval, even after a NUANS search, doesn’t create trademark rights. It’s a separate system.
• A domain name. A domain gives you control of an address, not exclusive rights in a name.
• An App Store or Google Play listing. The platforms have their own complaint processes, and they usually look for a registration when names conflict.

Search before you commit

Before you spend on design and marketing, search the Canadian Trademarks Database for the name and close variations, including different spellings, plurals and French equivalents. Then search app stores, corporate registries, GitHub and the web for unregistered users in your space. If you plan to sell in the US, search the USPTO’s records too.

The test is confusion. Section 6 of the Act looks at things like how similar the names are in appearance, sound and idea, the nature of the goods and services, and how long each has been used. A similar name for a different kind of product may be fine; a similar name for another productivity app usually isn’t.

Names that are hard to register

Section 12 of the Act makes some marks unregistrable. The one that catches software founders is a mark that is clearly descriptive, or deceptively misdescriptive, of the character or quality of the goods or services. Names like “Fast Invoice” for invoicing software or “Smart Scheduler” for scheduling software are likely to be refused unless they’ve become distinctive through use. Since June 17, 2019, CIPO can also object if a mark isn’t inherently distinctive.

Distinctive names, coined words and words used in an unexpected way are easier to register and to enforce. They also tend to work better as brands.

Classes to consider

Applications must list specific goods and services, grouped under the Nice Classification. Common classes for tech companies:

• Class 9: downloadable software and mobile apps.
• Class 42: software as a service, platform as a service and software development.
• Class 35: online marketplaces and business services, where relevant.
• Class 41 or 44: for education or health and wellness services delivered through the product.

Describe what you actually sell or plan to sell. Overly broad lists invite objections and can be challenged later.

When to file

Since June 17, 2019, Canada hasn’t required you to have used a mark before you file or register it. You can file as soon as you’ve chosen the name. CIPO examination takes time, so filing early protects your place in line. Your filing date also matters if someone else adopts a similar name after you.

Use still matters after registration. Under section 45, at any time after the third anniversary of registration, anyone can ask CIPO to require you to show use in Canada, and the registration can be cancelled for goods or services you aren’t using. If you plan to sell abroad, the Madrid Protocol lets you extend a Canadian application to other member countries.

Who should own it

The company, not a founder personally, should usually file. If a founder or contractor created the name or logo before incorporation, get a written IP assignment of those rights into the company. Investors check this in diligence, and you can see a quick overview with our who owns your code tool.

A short checklist

• Search the CIPO database, app stores and the web before you launch.
• Avoid names that describe what the product does.
• File in the company’s name, in the classes that match your product.
• Keep evidence of first use: launch dates, screenshots and invoices.
• Watch for later filings that are close to yours. You can oppose a confusing application during the opposition period.

We handle trademark searches and filings at fixed fees, listed on our fees page. If you’d like a second opinion on a name before you commit, book a free 15-minute consult.