It is important to be able to distinguish between trademarks, business names, trade names and corporate names. There are difficulties with these terms, as governments and people use them differently. For example in Ontario, a “business name” is most often used to refer to the name of a business that is not incorporated. On the other hand, Alberta uses “trade name” instead of “business name” in its legislation for essentially the same thing. In addition, many people refer to a “corporate name” as being a “business name.” All three of these refer to the names of businesses, be they incorporated or unincorporated.
Trade Names and Trademarks
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.
The business name is 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 is 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. According to the standard definition, it is a mark that has been adopted to distinguish the source of a particular good and/or service from other sources in a similar line of business.
Protecting Your Corporate Name
Registration of your corporate name, business name or domain name does not necessarily give you the right to use that name. This is stated clearly by all the governments that grant incorporations. For example, Industry Canada sends a Notice entitled “Protecting Your Corporate Name” with all its incorporations. The following is an excerpt from this Notice:
“Before an applicant applies for a corporate name, it is important for him or her to ensure that there are no similar existing corporate names, trade names or trade-marks. A NUANS search report, including trade-marks which are registered or proposed for registration, is required to be filed with articles of incorporation, amendment, etc. and is usually very reliable. Since, however, the NUANS system is not fool-proof, the applicant remains responsible for any likelihood of confusion.
“While a name granted by the Director will appear on future NUANS searches required for incorporation in the federal and most provincial jurisdictions, you may wish to conduct your own NUANS searches on a periodic basis after your name has been approved. This would be done in order to ensure, to your own satisfaction, that no confusing corporate or business name has subsequently been approved in the jurisdiction(s) in which you are carrying on business, and to give you up to date information about trade-marks that have been applied for or registered subsequent to the granting of your corporate name.
“Using a corporate name which is similar to a registered trade-mark may result in liability for infringement of the registered trade-mark even if the trade-mark was registered after the corporate name was granted. This is so because, under trade-marks law, the holder of a corporate name bears the responsibility of ensuring that no new trade-marks are registered which are confusing with that name. Information on registered and advertised trade-marks can be obtained from the Trade-Marks Journal distributed by the Canadian Intellectual Property Office or by conducting a search of one of the various electronic trade-mark databases. The holder of a corporate name has the right, in certain circumstances, to oppose the registration of a trademark or to have a trade-mark registration expunged.
“Registration of a trade-mark is the best way to obtain the exclusive right to use the mark in all of Canada in association with the products and services for which the registration is obtained. While the Trade-Marks Office can provide basic guidance, it is recommended that a specialist (a trade-mark agent or trade-mark lawyer) be consulted. It should be noted that trade-mark registration is not available for corporate names in all circumstances.”
An Example of Trademarks, Corporate Names & Business Names
For example, ABC Company could be selling its widgets using the name “Zink” on its packaging. The business name would be ABC Company, and the trademark would be “Zink.” If this company wanted to protect “Zink”, then it would apply for the registration of the trademark. In this case the business name is different than the trademark.
ABC Company may also wish to protect its corporate name “ABC.” It is a common misconception that a business name, trade name or corporate name registration protects the name. In fact, only a trademark can protect a name. In this case, ABC Company would have to use ‘ABC’ as a trademark and should also apply for a trademark registration.
Domain Name Protection in a Nutshell
- Registration of a domain name does not give you the right to use it in any way you wish, particularly commercially.
- Although the internet is global in scope, the right to use a domain and protect it is national – country by country.
- There is no separate domain name legislation in Canada. Rights are determined by trademark law.
- Registering a trademark will help to protect your domain name.