Warning about Unnecessary or Alternative Methods
for Obtaining Intellectual Property Protection
A trade-mark is a word, design, number, two-dimensional or three-dimensional form, sound or color, or a combination of two or more of these elements which a trader uses to distinguish his/her products or services from those of his/her competitors and serves to establish goodwill with the consumer. Almost every kind of company that operates a business uses a trade-mark of one kind or another to identify its products or services.
The difference between a trade-mark and a trade name is that the first is used with specific products or services coming from a single source, the trader, while the second identifies a company and its business as a whole. Words can be used interchangeably as both a trade-mark and a trade name. Use as a trade-mark will depend on the context of its use. Consulting a registered trade-mark agent or trade-mark lawyer is recommended.
The Trade-marks Act is federal (not provincial) legislation, and the Trade-marks Office in Ottawa/Hull administers the trade-mark registration system. Although a trade-mark owner acquires some legal rights in its trade-mark simply by using the trade-mark in the marketplace, these rights are limited to the geographic area in which the trade-mark is used and/or advertised and proof thereof must be made before the Court in case of litigation. Depending on whether the trade-mark is used in association with products or services, its use must fulfill certain criteria to be qualified as "use" under the law. Broader rights can be acquired by registering a trade-mark with the Trade-marks Office. The benefits of registration include the exclusive right to use the trade-mark throughout Canada, regardless of the areas in which the trade-mark is actually being used, and the right to sue for infringement of the registered trade-mark. In addition, if a trade-mark owner allows others to use its trade-mark or grants franchises, that use must be properly licensed. This is particularly important to protect the distinctiveness and enforceability of the trade-mark failing which it might be subject to expungement from the register.
A trade-mark may be incapable of being registered for different reasons, including the possibility that it is likely to be confused with a prior trade-mark. Different criteria are to be considered in evaluating the likelihood of confusion between trade-marks. A registered trade-mark agent or trade-mark lawyer can assess your trade-mark and provide an opinion as to whether the trade-mark you have or propose to adopt is capable of being protected in Canada.
It is highly advisable to conduct a search of trade-marks previously
registered or applied for before a trade-mark is used in the
marketplace, or before an application is filed. You may determine from
the search results if anyone else has already registered or applied for
the same or similar trade-mark, has used or intends to use the same or a
similar mark in the same field of activities, to the extent that the
public might be confused. If a prior confusing trade-mark is located by
the search, it may be best to select a different trade-mark, rather than
invest in a trade-mark which might later lead to a costly legal
dispute. Provincial searches for corporate names do not provide a list
of registered trade-marks. It is recommended that trade-mark searches
and a professional opinion be obtained from a registered trade-mark
agent or trade-mark lawyer.
Application for registration
An application for registration of a trade-mark can be prepared and filed by a registered trade-mark agent, who will also correspond with you and with the Trade-marks Office during the multi-step process leading to registration. In most cases, at least a year may elapse from the day the application is first filed until the day the registration certificate issues. The owner may begin to use the trade-mark at any time, provided it does not conflict with other trade-marks or trade names used or registered by others in the same field of activities.
Before you begin to use a trade-mark, (which could be the name of your business), whether you plan to register or not, you should consult with a registered trade-mark agent, and have a search of prior trade-marks conducted. If the search results are clear and the trade-mark is capable of being registered, then obtaining a federal trade-mark registration will increase your legal rights in the trade-mark. If your business involves licensing the use of your trade-marks to others, it is vital that you consult with a registered trade-mark agent or trade-mark lawyer to ensure that you are properly protected by trade-mark registrations. A registered trade-mark agent or trade-mark lawyer will also advise you as to the maintenance and protection of your trade-mark which must remain distinctive and properly used at all times. The trade-mark's relative strength or weakness will also affect the scope of protection it may receive. Consultation with a registered trade-mark agent or trade-mark lawyer is recommended before starting to use a trade-mark in the marketplace.
© 2013 Intellectual Property Institute of
Canada, Ottawa, ON 613.234.0516