1. What is a trademark?
2. What is the difference between a trade name and trademark?
3.What are the benefits
of registering your trademark?
4. Why should I use a Registered
Trademark Agent?
5. What is the difference
between a registered and unregistered trademark?
6. What is the procedure to
register a trademark in Canada?
7. How
long does it take to register a trademark in Canada?
8. Do I have to use my mark
before applying for registration?
9. How long does a Canadian
registration last?
10. How can I search and
register a trademark outside of Canada?
11. How can registering a
trademark end up paying for itself?
12. Should I consider trademark
registration?
1. What is a trademark?
Generally speaking, a trademark is a word or words, a symbol or design, or a combination of all of those, used to distinguish the products and/or services of one party from those of another in the marketplace. A trademark must be distinctive, that is, it must be able to differentiate the products or services of the owner from those of other persons.
With consumers today becoming more and more “brand loyal”, trademarks have become one of the most valuable assets of a company. Where trademarks once use to identify the source of products and/or services only, they now also represent the reputation or goodwill of the business providing such products and services.
2. What is the difference between a trade name and
trademark?
Unlike a trademark, which is used to identify the source of a product or service, a trade name is used to identify a business or company. It is the name under which a business operates.
Depending upon the context in which it is being used, a trade name can also function as a trademark. If it is being used as a noun it is considered a trade name. When it is being used as an adjective it is considered a trademark. For example, if you were to purchase light bulbs from Coastal Inc., in that case, Coastal Inc. is being used as a trade name. If you were to purchase Coastal light bulbs, Coastal is considered to be a trademark.
Many people are under the mistaken belief that registering their trade name with the Registrar of Companies, or incorporating their business, whether provincially or federally, affords them all-encompassing rights in that name, including trademark rights. Unfortunately this is not the case. What many people do not realize is that federal trademark registration is often superior to federal or provincial company registration.
3. What are the benefits of registering your trademark?
Although it is not a requirement, there are a number of distinct advantages to registering a trademark.
Some trademark rights are acquired through use of the mark in the marketplace, however, these rights are limited to the area within which the mark is being used. Registration of your trademark will provide you with protection of your mark throughout Canada, regardless of where you are using your mark. Thus, if a company located in Alberta began using a mark confusingly similar to your trademark for the same products and/or services, they would be considered to be infringing on your trademark rights, regardless of whether you also do business in that province.
A registered trademark provides you the right to sue for trademark infringement, should a competitor copy or imitate your mark. When suing for trademark infringement, reputation does not need to be established. Your trademark registration is your proof of ownership in the event of a legal dispute.
Trademark registration also affords you a number of other legal advantages, including the right to sue for depreciation of goodwill and the right to proceed to the Federal Court of Canada to obtain a nationwide injunction.
In most instances, registered trademarks become incontestable after five years. That is, your rights in the trademark cannot be challenged after five years, provided you were not aware of any pre-existing use of the trademark. This benefit does not extend to non-registered marks.
Registering your mark will often deter others from using a mark which is the same or similar. When a proper trademark search is done, a registered mark will alert parties who may be considering using the same or a similar name.
You spend numerous dollars placing your trademark on items such as signage, packaging and business cards and you spend countless hours building your company’s reputation. Registering your mark now could avoid wasted time, energy and money on legal disputes.
4. Why should I use a Registered Trademark Agent?
A registered Trademark Agent is a professional who has been apprenticed, examined and approved by the Trademarks Office to represent trademark applicants and registrants.
A key way of protecting your identity is through a registered trademark. Registration of your trademark provides legal title to intellectual property in much the same way as a deed is title to a piece of real estate. Preparing a trademark application and following through on it can be a complex task, particularly if a rival challenges your right to the mark. An experienced Trademark Agent can save you time and money by avoiding problems caused by such obstacles as a poorly-prepared application or inadequate research.
As well, the use of a trademark agent is strongly recommended if you intend to register marks in other countries.
5. What is the difference between a registered and
unregistered trademark?
It is advisable to perform a trademark search before using your trademark,
preparing marketing materials or committing to a logo or design. Your new
name, slogan or logo, even though it is not yet a household name, may already
be in commercial use. Another company may have used or have registered a
similar trademark which may lead to confusion or costly legal battles. A
careful trademark search can be the most intelligent, prudent business insurance
you can buy.
At the very least, a trademark search should be conducted to determine if another party holds the same trademark or trade name or one similar enough to cause conflict. After trademark rights are created and registered, periodic searches should be conducted to determine if other parties are attempting to register a conflicting trademark.
6. What is the procedure to register a trademark in Canada?
The first step to registering a trademark in Canada is filing an application for registration with the Canadian Trademarks Office.
When the Trademarks Office receives your application, it searches the trademarks records to find any other trademark that may come into conflict with yours and, if one is found, informs you of it. As well, it examines your application for compliance with the requirements of the Trade-marks Act and informs you of any requirements which are not met by your application.
Once any objections by the Office are overcome, the application will be approved for publication in the Trade-marks Journal. This gives third parites an opportunity to oppose your mark, should they feel it is not registrable. Because of the costs involved with an opposition proceeding, you do not typically see frivolous oppositions.
If no one files an opposition to your application, or once all oppositions are dealt with, the mark is allowed. Upon payment of the registration fee and filing a declaration of use in the case of a proposed use trademark application, your mark is registered.
7. How long does it take to register a trademark in Canada?
It typically takes between one and a half to two years to obtain a trademark registration. However examination of the application may be expedited if there is just reason to do so.
8. Do I have to use my mark before applying for registration?
No, a trademark application may be based on proposed use. However, it is important to keep in mind that in most instances your trademark must be used in Canada before it can be registered.
9. How long does a Canadian registration last?
Unless otherwise cancelled, your registration is valid for 15 years and you can renew the registration every 15 years thereafter upon payment of a renewal fee.
10. How can I search and register a trademark outside of Canada?
Registering your trademark with the Canadian Trade Marks Office protects your rights only in Canada. If you are selling wares or services in other countries, you should consider registration in each of those countries. We can assist you conducting searches and registering your trademark in foreign jurisdictions.
11. How can registering a trademark end up paying for itself.
As previously stated, trademarks no longer simply indicate the source of products and services, they now also represent the reputation of a business. If through the process of growing your business you establish an excellent reputation, your trademark could end up being a high valued asset for your company.
Entrepreneurs and others have been known to pay large sums of money for a company’s know-how, reputation and/or name. This may done through licensing the rights to use a trademark, through franchising or through sale of the company.
12. Should I consider trademark registration?
If you answered yes to any one of the above questions, then you should consider talking to a registered trade-mark agent to discuss the benefits of trade-mark registration.
