Common-law Trademarks
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.
Registered Trademarks
Many people and businesses complained to the government about how difficult and expensive it was to protect their trademarks. As a result, Parliament enacted a Trade-marks Act. This Act set up a register of trademarks, where one can apply. If the necessary requirements were met, such as not being confusing with another mark, not too descriptive, etc., the mark will likely be put on the register. This entitles the owner to additional rights. In addition, everyone is expected to know about any mark that is on the register. Thus, even if someone uses the mark without knowing about your registered trademark, they are considered to be infringing.
Advantages of Registered Trademarks
Registration of a trademark has many advantages. Here are some of the more important ones:
- It reserves the right of exclusive use across Canada. Thus, you can prevent someone from using your trademark even if they are across the country and you are not using your trademark there currently.
- Since the registry is a public record, it is assumed that everyone has knowledge of its contents. Thus, if someone adopts the same or a confusingly similar trademark, they are assumed to have done so with knowledge of your mark. They can then be stopped from using your mark and/or sued for infringement.
- Once you have registered your trademark, the Trademarks Office should refuse any other applications for registration of similar marks that might be confusing with yours. If the Office is in doubt, they are to send you notice of the pending application, so you can decide whether to oppose it.
- If your mark is registered under the Trade-marks Act, then you can use the Trade-marks Act action for infringement. This is a much quicker, broader and less expensive route than the common-law action for infringement.
- It is assumed that your trademark already has “goodwill”, so you do not have to prove it in court.
- It is much more difficult for anyone to challenge the validity of your trademark, particularly after five(5) years of being registered.
- It is easier to license someone else to use your trademark.
- A registered trademark can add considerably to the value of your business, especially if you are selling it or trying to get new investors. A registered trademark ‘solidifies’ the goodwill of the business into a far stronger asset that can be protected, expanded and even sold separately.