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.
-
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.
What do searches cost?
A simple Canadian trademark search, including a written opinion,
costs about C$575. A more complete search will cost more.
Are
there any obstacles to registration other than confusion with an existing mark?
Yes, there are a number of other limited 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 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 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 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 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.
What does prosecution cost?
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 C$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 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. These steps entail further
costs of about C$300 - $1,000 although it should be noted that these costs do not
normally arise until a year or more after the trademark application is filed.
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
(Oyen Wiggs Green & Mutala LLP)