Trade-mark registration gives you exclusive rights to words, symbols and designs, or combinations of these, that distinguish your wares or services from those of someone else. Registration provides protection within Canada for renewable 15-year periods. Although, except in the case of precious metals, registrations is not required, registration does provide certain advantages.
The Canadian Trade-Marks Act (the “Act”) defines a trade-mark as “a mark that is used by a person for the purpose of distinguishing or so as to distinguish wares or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others.”
A trade-mark is a word, logo, symbol, design, or a combination thereof, displayed on wares or associated with services, to identify the wares or services to purchasers.An example of this is the golden arches that McDonalds uses or the name The Motley Fool used by the mortgage site Fool.co.uk . It is a name recognizable to the company as the arches are to the McDonalds.
Therefore, a trade-mark indicates that the goods or services associated with it originate with a particular owner, and serves to distinguish such goods or services from those of others. A trade-mark may generally consist of a word or words, or a design, or a combination of such elements. A trade-mark may also consist of the shape of a product or its container (a “distinguishing guise”) if that shape is distinctive of the goods of a particular trader.
Trade Name Vs. Trade-Mark
Many people confuse trade names and trade-marks and think they acquire trade-mark rights by virtue of having a trade name.
A trade name or business name is a name under which a proprietor or company carries on a particular business. It may be the corporate name of a company carrying on the business or it may be a name registered with provincial authorities. Generally such registrations do not confer any proprietary rights to the name, and simply enable the public to ascertain who is using a particular trade name.
The owner of a trade name is entitled to bring an action for passing off against a person that uses a trade name that is likely to cause confusion between the businesses of the parties. A trade name may itself incorporate a trade-mark, or may itself be used as a trade-mark (to denote the origin of goods or services, as opposed to being a name) and may therefore be registrable and enforceable as a trade-mark. The owner of a trade-mark or trade name may also be able to prevent another from registering a confusingly similar corporate name.
Trade-mark registration is not mandatory in Canada but does provide many significant advantages including the following:
- Registration is direct evidence of ownership, and can be essential in protecting an internet domain name (URL).
- In a dispute, the registered owner does not have to prove ownership; the onus is on the challenger. Use of an unregistered trade-mark can lead to a lengthy, expensive legal dispute over who has the right to use it.
- A registered trade-mark is a valuable asset for business expansion through licensing franchises.
- A registered trade-mark can be enforced throughout Canada, regardless of whether it is being used or enjoys goodwill in any particular area. An unregistered trade-mark can be enforced only in those areas where it has actually been used sufficiently extensively to establish goodwill.
- The Canadian Intellectual Property Office (Trade-marks Office) can and does refuse applications to register trade-marks which it believes are likely to be confused with existing registered trade-marks.
- The owner of a registered trade-mark may initiate legal action for infringement proceedings in either the provincial or federal courts. The owner of an unregistered trade-mark may not initiate trade-mark infringement proceedings, but must rely on common law “passing off” proceedings, which subject a plaintiff to a more onerous burden of proof.
- After a trade-mark has been registered for five years it cannot be challenged on the basis that another party used it first (unless the owner of the registered trade-mark knew of the other party’s use before adopting the trade-mark).
- A Canadian trade-mark registration can be used to claim priority in registering the trade-mark in foreign countries, but foreign registration may not be possible if the trade-mark is unregistered in Canada.
- Registration of an actual trade-mark which is being used on wares or in association with services is permitted. Trade-mark registration based on proposed use in Canada is also available as is registration and use of the trade-mark abroad by the Canadian applicant.
In order to register a trade-mark, an application must be submitted based on one or more of the grounds set out above. An application fee of $300 is required.
The application will be reviewed by an examiner on behalf of the Canadian Intellectual Property Office – Trade-marks Branch. The examiner may approve the application as filed for advertisement or raise various requirements or objections. Applicants are given an opportunity to respond to such objections.
Once an application is approved, a formal notice of approval is issued. The application will then be advertised in the Canadian Trade-Marks Journal, following which it may be opposed by one or more parties on a variety of grounds, including prior use of a confusingly similar trade-mark or trade name. Trade-mark oppositions are often lengthy and complex in nature, and are decided by the Opposition Board.
If no opposition is filed or an opposition is unsuccessful or withdrawn, the application will proceed to allowance. In order to obtain a certificate of registration a registration fee of $200 must be paid. It the application was filed based on proposed use, a document entitled a Declaration of Use stating that the mark applied for is in use in Canada must be filed when use of the mark has commenced.
The decision of an examiner or the Opposition Board may be appealed to the Federal Court of Canada.
Generally, the minimum period required to obtain a straight forward trade-mark registration is approximately 1 year.
The term of registration is 15 years from the date of issuance and it is renewable for further terms of 15 years each.
After its third anniversary, failure to use a registered mark in Canada may result in the registration being vulnerable to cancellation or amendment.
Certain proposed marks may not be registrable. If two parties choose similar marks then the person who first uses the trade-mark in respect of wares or services anywhere in Canada is entitled to register the mark and obtain exclusive rights to use it with those wares or services. The second person will be unable to register his mark.
Certain other marks may not be subject to registration under the Act.
Persons’ names or surnames are not normally registrable as trade-marks, unless there has been extensive use of the name in question as a trade-mark.
Words which clearly describe (or deceptively misdescribe) the character or quality of the wares or services are not protectable under the Act. For example, “clear” is not a good choice as a trade-mark for water, since water is usually “clear”.
Geographic place names should be avoided, although technically place names are a problem only if the “place” is a known source of the ware or services in question.
Words which are the name, in any language, of any of the wares or services to be associated with the trade-mark, are not registrable.
Finally, certain prohibited marks such as the Coats of Arms; the arms, crest or flag of a governmental body; the symbol of the Red Cross; immoral or offensive terms; etc., are not registrable as trade-marks.
A trade-mark may be licensed pursuant to the Act if the trade-mark owner controls the character or quality of the wares or services with which the licensee uses the trade-mark. A presumption of appropriate licensing arises if the product identifies the trade-mark owner and asserts that the mark is used under license. If the trade-mark owner does not actually control the licensee’s use of the trade-mark, the trade-mark’s distinctiveness may be prejudiced, thereby invalidating the mark.
Protecting the Registered Trade-Mark
Rights to a registered trade-mark can be lost due to actions or inactions by the registered owner.
Generic use of trade-marks should be strictly avoided.
Trade-marks should never be used as the name or function of a product even if the trade-mark contains descriptive wording or incorporates a reference to the relevant wares or services.
Trade-marks should be denoted as such wherever they are used, even though under Canadian law it is not necessary to do so. Furthermore, it is advisable to indicate that the trade-mark is registered when it is used.
As discussed above, third party use of the trade-mark should be limited to licensees pursuant to a proper license agreement.
Finally, strict enforcement of the trade-mark should be pursued. Any infringement of the trade-mark should be vigorously challenged.
Other Trademark Links
"This article provides information of a general nature only. It is only current at the posting date. It is not updated and it may no longer be current. It does not provide legal advice nor can it or should it be relied upon. All tax situations are specific to their facts and will differ from the situations in the articles. If you have specific legal questions you should consult a lawyer."