What
is a trademark?
A trademark is a word, logo, symbol, design, or a combination thereof, displayed
on wares or associated with services, to identify the wares or services to
purchasers. The trademark generally indicates that the wares or services come
from, or are approved or sponsored by, the same source as all other wares or
services associated with the same trademark. A trademark may also indicate that
the wares or services meet the same standard of quality as all other wares or
services associated with the same trademark. 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. 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 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
I "reserve" a trademark before I'm ready to use it?
Yes, assuming that no one else is using the same or a similar trademark. In such
a case, you may apply to register the trademark on the basis of an intent to
use it (also called "proposed use") at some unspecified future date. You will
then have priority in the trademark, even if someone else subsequently attempts
to use it before you are ready to do so.
Must
I register my trademark?
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 mark can be enforced throughout Canada, regardless of whether it
is being used or enjoys goodwill in any particular area. An unregistered mark
can be enforced only in those areas where it has been used sufficiently
extensively to establish goodwill.
-
Many parties search the Trademarks Register as an aid to selecting new
trademarks. If your mark is registered, competitors who conduct such searches
are much less likely to unwittingly choose a mark that conflicts with yours,
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. This can
also curtail problems, if your trademark is registered.
-
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, which subject a plaintiff to 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, but foreign registration may not be
possible if the mark is unregistered in Canada.
-
A trademark registration can be of vital importance in registering and/or
maintaining an Internet domain name. Please refer to our Domain Names FAQ for
further details.
Do
I have to register in every Canadian Province?
No. In fact, there are no provincial trademark registration systems. We have 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 I apply to register?
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 in Canada. Such applications
have priority as of the date on which they are filed in the Trademarks Office.
If there is a concern that another party may file a conflicting application, it
may even be advisable to accept the risk of filing an application without
waiting even one day for the results of a registrability search. Even if the
application is able to assert the benefit of several years' use of the
trademark important benefits can be gained by filing promptly.
Registrability
searches
Before you apply to register your trademark, it is advisable to conduct a
registrability search. As a minimum, the search should cover the records of
registered trademarks and pending trademark applications maintained by the
Canadian Trademarks Office. The search objective is to assess the potential for
consumer confusion of your trademark with existing trademarks. If desired, and
subject to budgetary considerations, the search can be extended to cover
various sources of information respecting unregistered trademarks, such as
telephone or trade directories, corporate/trade name registries, etc.
Usually, we search databases 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.
Search
Costs
A simple Canadian trademark search, including our written opinion, costs about
CA $250 (plus taxes). A more complete search will cost more.
Are
there any obstacles to registration other than confusion with an existing mark?
-
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 registable 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.
-
Certain prohibited marks such as the Royal Arms; the arms, crest or flag of a
governmental body; the symbol of the Red Cross; etc., are not registrable as
trademarks.
Trademark
licensing
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, labelling
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, invalidating the mark.
How
is a trademark registered?
By filing a properly prepared trademark application in the Canadian Trademarks
Office. The Trademarks Act prescribes a variety of grounds for trademark
registration. It is important to ensure that your trademark application recites
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
unavailable, it may be too late to secure a valid substitute registration.)
Examination
by the Trademarks Office
After the application is filed in the Trademarks Office, it is examined by a
Trademarks Office examiner. For example, the 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 by 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 the foregoing stages, assuming that there
are no examiner's objections or oppositions.
Prosecution
costs
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. For example, costs of CA $200 - $600 are
typically incurred in making a written submission to overcome most types of
examiners' objections. Some cases may require more than one submission. Other
cases may involve complex issues entailing costs in excess of the foregoing
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. These steps entail further
costs of about $300 - $600 although it should be noted that these costs do not
normally arise until a year or more after the trademark application is filed.
Information
required to prepare a trademark application
-
The full name and postal address of the party in whose name the trademark is to
be registered (the "applicant"). If the applicant is a corporation, please
specify the jurisdiction of incorporation.
-
Precisely what is the trademark that is to be registered? A single word; a
hyphenated word; a phrase; a design; a combination of word(s) plus design; or
... ? Once filed in the Trademarks Office, the trademark application cannot be
amended to change the trademark, so it is vital to give us precise instructions
at the outset.
-
Is the applicant the original owner of the trademark, or are its rights in the
trademark derived from one or more predecessors? Please identify every
predecessor, explain how each predecessor used the trademark, and explain how
the applicant acquired the trademark rights from the predecessor(s).
-
Has the applicant (or a licensee) actually used the trademark in Canada? Please
note:
wares: a trademark is used on wares by selling the wares with the
trademark applied to the wares or to their packaging
services: a trademark is used in association 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, please also:
-
specify the earliest date on which such use occurred on each type of wares
and/or services
-
explain how and where the trademark was first used
-
provide specimens of such use (i.e. labels as affixed to the wares at the time
of sale, or packages in which the wares are sold; or, for a service mark,
sample advertising material)
If such use has not
occurred, please 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), please
provide full particulars of such use and copies of all relevant documentation,
such as licence agreements, etc. pertaining thereto. 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 (i.e. shirts,
dresses, etc.) is required.
Foreign
Applicants
-
If the trademark is registered in the applicant's home country, provide copies
of all such registrations. Please 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 registration(s).
-
If there is a pending application to register the trademark in the applicant's
home country, specify the country; application filing date(s) and serial
number(s); and, wares/services for each such application. Please 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. We do not require a certified copy
of the priority application.
Foreign
Trademark Applications
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. We are able to serve our clients in protecting their
trademarks throughout the world, with the assistance of our extensive network
of foreign associates. Foreign trademark registration procedures and costs vary
widely, depending upon the country of interest. Please let us know if you
require further information concerning specific foreign countries.
For more information contact
(Oyen Wiggs Green & Mutala LLP)