TRADEMARK INFORMATION & FAQS
Nine Reasons to Register a Trademark
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 have never used your trademark there.
Since the registry is a public record, it is assumed that everyone has knowledge of its contents. Therefore an infringer can be stopped from using your mark and sued for trademark infringement.
Once you have registered your trademark, the Trademarks Office (CIPO) is required to refuse any other applications that might be confusing with yours. If the Office is in doubt, they send you notice of the pending application, so you can decide whether to oppose it.
If your mark is registered under the Trademarks Act, then you can use the Trademarks Act legal action for infringement. This is a much quicker, easier and less expensive route than the common-law action for trademark 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, especially 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. It can also be listed as an asset on your balance sheet.
A registered Canadian trademark can be used as a basis for registration of your trademark in many other countries, including the United States.
Eight Things You Should Know About Trademarks
A trademark 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.
Trademarks can consist of words and/or a design. Most trademarks are wordmarks, such as Kodak or Coke, design marks, such as Nike’s “swoosh,” or a combination, such as the stylized script for Coca Cola. A tag line, such as ‘Things Go Better with Smuglers” can also be registered.
As soon as you have begun to properly use a valid trademark, you have established it as a ‘common law’ trademark. These ‘common-law’ rights are relatively weak, as well as being both expensive and difficult to enforce.
Registration of a trademark provides much stronger rights than common-law rights, including protection all across Canada.
Registration of your corporate name, business name or domain name does not give you the right to use that name! Registration of a trademark is the best way of protecting a name used in business
After registration, you should monitor the market and the trademarks registry to prevent others from infringing on your trademark. Otherwise you might lose those rights.
There is no annual fee for maintaining a trademark registration. Currently, they must be renewed every 10 years.
There is no such thing as an international trademark. If you want trademark protection in a particular country, then you must register in that country.
What is the Difference Between Trademarks, Trade Names and Corporate names?
t is important to understand the difference 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.
What is the Difference Between a Word Trademark, a Tag Line and a Logo?
Word trademarks normally consist solely of letters and common characters that are used for real or made-up words. Examples include Canadian Tire, Best Buy and Loblaw's. A registered trademark will protect the words alone.
A slogan or catch phrase, such as "the pause that refreshes", is simply a word mark with lots of words. This is frequently called a tag line.
Design Mark / Logo
A trademark may consist of only a design, with no words or characters at all, such as the Nike "swoosh." Design marks are often inherently more distinctive than word marks, and hence are 'stronger' trademarks. However, they must be used exactly as registered to gain the benefit of the registration. Also, if there are words associated with the design, the words per se are not protected. If you use the same words but with a different design or colour, then the registration may not give you protection. If there are any words or characters involved with a design mark, they should also be searched.
Wordmark with Design Characteristics / Logo
The words of a trademark may have special design characteristics, such as a distinctive font, special borders, designs or patterns.
Registered and Unregistered Trademarks
It is not necessary to register a trademark in order to have valid trademark rights. Such rights derive from the old English Common Law, and 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 your common-law trademark is infringed, then you can sue in the Courts, but your rights are difficult to prove and enforce. You must prove that there is "good will" associated with your mark. Also, these rights only extend as far as your reputation extends and no further.
Registering your trademark provides you with much stronger protections. The Trademarks Act sets up an official Registry of Trademarks and everyone is deemed to be aware of what is on this Registry. As a result, if someone uses your registered trademark even if they don't actually know about it, they are nevertheless infringing and you can sue them. Your rights are also good throughout Canada.
Once you have identified a potential candidate, you should do a preliminary search. The purpose at this point is to rule out any marks that have obvious problems. Note that even if another mark is exactly the same as yours, if the line of business is sufficiently different then your mark may be registrable. What is considered 'sufficiently different' is a legal question and each case is different.Internet searches should be done. Note that even if a trademark is used in another country you still may be able to use it in Canada. This depends on the 'use' of the trademark in Canada, which is another legal question. We offer a free trademark prescreen search which you can use for exact matches in Canada.
Once your trademark has passed the preliminary stage, it's time to do a comprehensive search which goes beyond just exact matches. You must also search for 'sound alikes'. For example, Koke would be confusing with Coke. The best way do this is through a comprehensive search of the trademarks database using algorithms. We offer such a search, with our opinion as to the registrability of your mark including factors such as descriptiveness and confusion with other marks. Please contact us if you're interested.
Choosing A Strong Trademark
A trademark is considered weak if it has only narrow legal protection. The strongest kind of mark is usually a distinctive made-up word with no inherent connection to the product being offered (such as Xerox or Kodak). These strong marks will get wider legal protection.
Design or logo marks can be strong but they should be distinctive. An example would be the Nike 'swoosh'. However, a design must be used exactly as registered to gain the benefit of the registration. If you change the design, even a little bit, and stop using the old design, then you must register the new design to get protection.
If you use both both a design and word mark together, then you may have to register three marks - one for the design alone, one for the words and a third for the two together. However, if you always use the two together, you may get away with registering just one mark. This is very dependent on the circumstances in each case.
Trademark marking basically refers to the use of symbols such as the ® or ™ symbol to identify a word, slogan or design as a trademark. Trademark rights and laws vary from country to country. Therefore before asserting trademark rights or using trademark marks in a new country you should confirm that you can legally do so.
Why Mark Your Trademark
It provides notice of your claim to own the mark; It distinguishes the mark from the surrounding text, making it clearer that you are claiming it as a trademark; Failure to use a registration or trademark notice may limit the remedies available in a legal action.
The Canadian Situation
Canada’s Trademarks Act does not include any marking requirements. As a result, there are no rules in Canada with respect to use of the ® symbol, the ™ (trade-mark), the * SM (service mark) or the * MC (marque de commerce). However a Canadian who is exporting either wares or services into the U.S. should be cautious in the use of the ® symbol.
The U.S. Situation
ou cannot use the ® symbol unless the mark has been federally registered with the USPTO. The symbol "™" for "trademark" can be used to indicate that, even though a mark isn't registered, the owner is nevertheless claiming trademark rights in it.