Adoption of a Trademark
A trademark belongs to the first business that “adopts” the mark to identify its goods or services. A mark may be “adopted” in several ways, including:
- Goods bearing the mark are sold, or services are performed, in association with the mark; OR
- A “proposed use” application is filed; OR
- The mark has become “well known” across Canada by reason of “spill-over” advertising on radio or TV or through magazines. For example, a U.S. firm advertising its product on a major television network, which “spills over” into Canada by its transmission signals, may well acquire trademark rights in Canada.
The right to have a trademark registered generally belongs to the first person to adopt a mark in a particular line of business. Even if the first user does not get a registration, they continue to have the right to get it. If someone uses the trademark later, and obtains a registration, it is still the first user who has the right to register. The first user can cause the registration of the second user to be cancelled. However, this situation changes five years after registration, with the second user henceforth being entitled to the registration over the first user, provided the first user has not sought cancellation of the second user’s registration.
The name under which the business is carried on, whether the business is incorporated or unincorporated. If it is a sole proprietorship or a partnership in Ontario, the name of the business must be registered, and that usually becomes the business name, i.e., the name under which the business is carried on.
A trademark cannot be clearly descriptive of the character or quality of the goods or services. For example, you could not trademark the name EXCELLENT PREMIUM QUALITY PAINT for a paint. If you could do so, this would mean no-one else would be able to use “excellent premium quality” to describe their paint. It is a policy of trademark law that a trademark cannot be used to deprive people of the right of use of common words, such as the words “excellent premium quality” in the example given.Also, a trademark cannot be clearly descriptive of the origin of the goods or services. For example, you could not register ‘B.C. Apples” for apples from British Columbia.
It is not necessary to register in order to have valid trademark rights. Such rights derive from the old English Common Law, are hence the mark is often called a common-law or unregistered trademark. As soon as a valid trademark has been properly used, these common-law trademark rights arise, but they are very weak rights. If a common-law trademark is infringed, then you can sue in the Courts, but you have only weak rights. For example, you must prove that there is “good will” associated with your mark. Also, these rights only extend to the locale where you have this reputation, and not anywhere else.
It is illegal to use a trademark that is confusing with another name or mark. To determine the likelihood of confusion, all the surrounding circumstances are considered, including the:
- inherent distinctiveness of the relevant trademark(s) and/or business names
- extent to which they have become known
- length of time in use
- nature of wares, services, business
- nature of the lines of trade (wholesale, retail, etc.)
- degree of resemblance in appearance or sound or in the ideas suggested by two trademarks
When you compare two names or marks with respect to the likelihood of confusion, you are to put yourself in the shoes of a typical Canadian, of ordinary intelligence and ordinary education in English or French, who has an imperfect recollection. The question is not whether you would be confused. The question is whether this hypothetical person would be confused.
A trademark cannot be registered if it is “deceptively misdescriptive.” This means it must be found to both misdescribe the service or ware AND it must be deceptive.
In order for a trademark to be considered “distinctive,” several requirements must be met:
- the mark and the product are associated; and
- the owner “uses” this association, according to the trademark definition of “use”; and
- this association enables the owner to distinguish its product from those of others.
A trade name is the name under which you carry on your business. It can be the legal name of your corporation, your partnership or your sole proprietorship. A trademark is a word, symbol, design or combination of these that is used to distinguish your wares or services from those of others in the marketplace. A trade name can be registered as a trademark, but only if it is being used as a trademark. And contrary to common perception, registration of a trade name does not protect the name. Only registration as a trademark can effectively do so.
A distinctive mark (for example a word, phrase, symbol or design, or some combination thereof) that is affixed to or accompanies an article or service which is intended for sale. Its purpose is to indicate that it is manufactured, selected or sold by a particular person or firm.
‘Use’ of Trademarks
“Use” within the context of trademarks is critically important, for two major reasons:
- A trademark, whether registered or unregistered (common-law), cannot exist without use; and
- Use establishes the “priority date.”
‘Use’: Proposed Use
It is possible to file a trademark application based on “proposed use.” The procedure is basically the same as a regular application; however, before receiving a registration you must both “use” the trademark and file a Declaration of Use, indicating that you have started using it.
‘Use’: Meaning of ‘Use’ for Services
A trademark is “used” if it is displayed at the place where the services are provided. The services themselves must be delivered by the owner of the trademark, or by a licensee operating under a proper license.Use for services may also occur where the trademark is used in association with the advertising of services. Thus use of a trademark on a store-front sign, or on a newspaper ad, etc., could qualify as trademark use in respect of services.
‘Use’: Meaning of ‘Use’ for Wares
Use of a trademark on wares occurs when the trademark is associated with the wares at the time of its sale or delivery. Putting your trademark on a tag or label attached to the ware, or its container, is the usual and best way of establishing ‘use’ of the trademark. There are also other ways of establishing use, but these depend very much on the particular circumstances involved. Advertising does not usually qualify as trademark use for wares.Use of a mark as part of a corporate name, or simply as a decoration on an invoice, letterhead or the like, does not qualify as trademark use in respect of wares.