Trademarks

What is a trademark?

A trademark is a word, logo, symbol, design, or a combination thereof, which is displayed on wares or associated with services, and identifies them to purchasers. The trademark generally indicates that the wares or services come from, or are approved or sponsored by, a particular source. A trademark may also indicate that the wares or services meet a particular standard of quality. For example,"Kraft Dinner" is a trademark used by Kraft Canada Inc. to distinguish its macaroni and cheese product from other macaroni and cheese products.

What is a trade name?

A trade name is a name under which a particular business is carried on by an individual, partnership or company. It may be the corporate name of the company carrying on the business. A trade name displayed on wares or associated with services may also function as a trademark. For example,"Kraft Canada Inc." is a trade name and a corporate name.

How are trademark rights created?

In Canada, trademark rights are created by actual "use" of the trademark on wares or in association with services. Sale of wares in packages bearing the trademark, or provision of services described in advertising which displays the trademark, are examples of trademark use. In some countries, trademark rights are created solely by registration, even if the mark is not actually used.

Who wins if two parties choose similar marks?

In general, the party who first uses the trademark in respect of certain wares or services, anywhere in Canada, is entitled to register the mark and obtain exclusive rights to use it with respect to those wares or services.

Does incorporation protect the name of the corporation?

Incorporation protects the name of the corporation only in the limited sense that the incorporation authority (e.g. the British Columbia Corporate Registry) will not allow incorporation of another company with the identical name or with a very similar name. But this has nothing to do with the company’s ability to do business under its corporate name, or with use of the corporate name as a trademark. If consumers are likely to confuse a corporate name with a name which another business has already established in the marketplace, then the owner of the established name may be able to prevent use of the corporate name. This is so even if the corporate name was adopted without knowledge of the established name, even if the business using the established name is not incorporated, and even if the Corporate Registry has "approved" the corporate name.

Can a trademark be reserved before use?

Yes, assuming that no one else is using the same or a similar trademark. In such a case, an application to register the trademark is made on the basis of an intent to use it (also called "proposed use") at some unspecified future date. This will then establish priority in the trademark, even if someone else subsequently attempts to use it before the party who registered it is ready to do so.

Do trademarks have to be registered?

No. It is not necessary to register a trademark in order to use it, but there are some important advantages if you do register.

What are the advantages of registration?

• A registered trademark can be enforced throughout Canada, regardless of whether it is being used or enjoys goodwill in any particular area. ("Goodwill" simply refers to possible associations people have with the trademark.) An unregistered trademark can be enforced only in those areas where it has been used extensively enough to establish goodwill;
• Many parties search the Trademarks Register when selecting new trademarks. If a mark is registered, competitors who conduct such searches won’t unwittingly choose a mark that conflicts with it, thus nipping potential infringement disputes in the bud;
• The Trademarks Office itself often refuses applications to register trademarks which are likely to be confused with previously registered trademarks;
• The owner of a registered trademark may initiate infringement proceedings in either the provincial or federal courts. The owner of an unregistered trademark may not initiate trademark infringement proceedings, but must rely on "passing off" proceedings, in which a plaintiff has a more onerous burden of proof;
• After a trademark has been registered for five years it cannot be challenged on the basis that another party used it first (unless the owner of the registered trademark knew of the other party’s use before adopting the trademark). This "incontestability" provision can be quite valuable, since one can never be absolutely sure what unregistered trademarks might be in use somewhere in Canada;
• A Canadian trademark registration can be used to claim priority in registering the trademark in foreign countries, while foreign registration may not be possible if the trademark is unregistered in Canada; and,
• A trademark registration can be of vital importance in registering and/or maintaining an Internet domain name.

Please see the Domain Names FAQ for further information.

Is registration province-specific?

No. Canada has a single, federal registration system which is administered by the Canadian Intellectual Property Office (an agency of Industry Canada). Do not confuse the federal trademark registration system with the federal or provincial incorporation systems. Unlike a trademark registration, the mere incorporation of a company either federally or provincially does not prevent others from adopting the corporate name in the marketplace.

When should registration take place?

As soon as possible. Subject to the results of a registrability search, a trademark application should be filed promptly, especially if the application is to be based on intent to use the trademark. Such applications have priority as of the date on which they are filed. If there is a concern that another party may file a conflicting application, it may be advisable to accept the risk of filing an application without waiting for the results of a registrability search. Even if an applicant has the benefit of several years’ use of a trademark, important benefits can be gained by filing promptly.

What does a registrability search entail?

Before applying to register a trademark, it is advisable to conduct a registrability search. At a minimum, the search should cover the records of registered trademarks and pending trademark applications maintained by the Canadian Trademarks Office. The objective is to assess the potential for consumer confusion of a trademark with existing trademarks. Searches can be extended to cover other sources of information relating to unregistered trademarks, such as telephone or trade directories, and corporate/trade name registries.

Usually, databases are searched, which replicate both the records kept by the Canadian Trademarks Office, and the records of corporate/trade names kept by the various provincial and federal incorporation authorities. In some cases, additional searching to better canvas unregistered trademarks may be recommended.

Are there any obstacles to registration other than confusion with an existing mark?

Yes, there are a number of other limits on registrability:

• Persons’ names or surnames are not normally registrable as trademarks, unless there has been extensive use of the name in question as a trademark. For example, "Ford", despite being a surname, is a registered trademark for motor vehicles;
• Words which describe (or misdescribe) the character or quality of the wares or services should be avoided. For example, "Clear" is not a good choice as a trademark for glass, since glass is usually clear;
• Geographic place names are not usually registrable if the place is a known source of the wares or services in question or of a wide range of products. For example, "Paris" is not a good choice as a trademark for perfumes;
• Words which are the name, in any language, of any of the wares or services to be associated with the trademark, are not registrable. For example, "Brogue" is not a good choice as a trademark for shoes, because a brogue is a type of footwear; and,
• Certain specifically prohibited marks such as the Royal Arms; the arms, crest or flag of a governmental body; and the symbol of the Red Cross are not registrable as trademarks.

Can trademarks be licensed?

A trademark may be licensed if the trademark owner controls the character or quality of the wares or services with which the licensee uses the trademark. A presumption of appropriate licensing arises if the product packaging, labeling or signage identifies the trademark owner and asserts that the mark is used under license. But, if the trademark owner does not actually control the licensee’s use of the trademark, the trademark’s distinctiveness may be prejudiced and the trademark invalidated.

How is a trademark registered?

Registration is done by filing a properly prepared trademark application at the Canadian Trademarks Office. The Trademarks Act prescribes a variety of grounds for trademark registration. It is important to ensure that a trademark application cites the proper ground(s) for registration. Otherwise, the resultant trademark registration may be invalid and unenforceable. (All too often, problems of this sort are discovered when a valid registration is needed urgently — namely when an infringement situation develops. Not only is the desired protection then unavailable, it may be too late to secure a valid substitute registration.)

What examination does the Trademarks Office conduct?

A Trademarks Office examiner searches for potentially confusing trademarks, and assesses other potential obstacles to registration, as discussed above. If the examiner raises no objections, the application is approved for publication in the Trademarks Journal. For a two-month interval after publication, the application is subject to opposition from other parties. Oppositions, which are relatively uncommon, may for example be based upon prior use of an allegedly confusing trademark. It typically takes up to a year to "prosecute" an application through all of the stages, assuming that there are no examiner’s objections or opposition. In this context, prosecution typically consists of responding to any requirements or objections that may be raised by an examiner, paying registration fees and complying with formal requirements
for the trademark registration to be issued.

Additional prosecution costs arise if the examiner raises an objection, or if the application is opposed. Such costs are highly variable and depend upon the amount of professional time spent. Some cases may require more than one submission. Other cases may involve complex issues entailing costs above this range. Opposition proceedings (akin to litigation) involve further expenses.

After any examiner’s objections or oppositions are dealt with, one or two further steps are required to complete the registration process. In all cases, a registration fee must be paid to the Trademarks Office. If the application is based on intent to use the trademark in Canada, then it is also necessary to document actual usage before registration can occur.

What information is needed for a trademark application?

• The full name and address of the applicant in whose name the trademark is to be registered. If the applicant is a corporation, the jurisdiction of incorporation must be specified.
• Description of the trademark that is to be registered (e.g. a single word, a hyphenated word, a phrase, a design, a combination of word(s) plus design, etc.) Once filed in the Trademarks Office, the trademark application cannot be amended to change the trademark, so it is vital to provide precise instructions at the outset.
• Specification of whether the applicant is the original owner of the trademark, or if the applicant’s rights in the trademark are derived from one or more predecessors. If so, the application must identify each predecessor, explain how each predecessor used the trademark, and explain how the applicant acquired the trademark rights from the predecessor(s).
• Specification of whether the applicant (or a licensee) has actually used the trademark in Canada. In this regard, note the following: i) a trademark is used in connection with wares by selling the wares with the trademark applied to them or to their packaging; and ii) a trademark is used in connection with services by actual provision of the services, coupled with a display of the trademark in advertising for the services, or accompanying the provision of the services.
  If such use has occurred, the application must also specify: i) the earliest date on which such use occurred on each type of wares and/or services; and ii) how and where the trademark was first used. Specimens of such use should also be provided (e.g. labels as affixed to the wares at the time of sale, packages in which the wares were sold, or sample advertising material). If such use has not occurred, the application must confirm that fact.
• If the trademark is or will be used by any entity other than or in addition to the applicant (even a subsidiary or other closely related company), full particulars of such use and copies of all relevant documentation, such as licensing agreements. It is in the mutual interest
  of all parties involved with the trademark to ensure that the trademark is properly licensed.
• A detailed list, in ordinary commercial terms, of the wares and/or services to which the mark is (or is to be) applied. For example, the simple designation "clothing" will not be accepted by the Trademarks Office because it is too broad. A more specific listing of the clothing items involved (e.g. shirts, dresses, etc.) is required.

See forms and filing information for further details.

What additional considerations apply to foreign applicants?

• If the trademark is registered in the applicant’s home country, copies of all such registrations must be provided. The application must specify as well whether the trademark is actually being used by the applicant in its home country, with respect to the wares/services covered by the home country registration(s).
• If there is a pending application to register the trademark in the applicant’s home country, the application must specify the country application filing date(s) and serial number(s) and wares/services covered by each such application. It should also specify whether the trademark is actually being used by the applicant in its home country with respect to the wares/services covered by the home country application(s).
• Filing date priority can be claimed in a Canadian trademark application if the Canadian application is filed within six months of the filing date of the originating foreign trademark application. A certified copy of the priority application is not required.

What about trademark protection outside Canada?

A Canadian trademark registration protects the trademark only within Canada. In many cases, it may also be important to protect the trademark in one or more foreign countries. Oyen Wiggs Green & Mutala LLP can protect clients’ trademarks throughout the world, with the assistance of an extensive network of foreign associates. Foreign trademark registration procedures and costs vary widely, depending upon the country of interest.

For more information contact mail@patentable.com (Oyen Wiggs Green & Mutala LLP)