What is a trade-mark?
A trade-mark is a mark, symbol, logo, sign or other element that is used by a person or business for the purpose of distinguishing the goods or services of that person or business.
A trade-mark may consist of a single word or a string of words in the form of a phrase or tag line. It may also consist of a design element, or a combination of any of these elements. It can also be the shape of the goods or their packaging in certain circumstances.
A registered trade-mark has been registered by the Trade-marks Office in a particular country, such as the Canadian Trade-marks Office.
Is it necessary to register a trade-mark?
Rights of a trade-mark stem from registration under the Federal Trade-marks Act or from use of the trade-mark by the trade-mark holder.
A Canadian trade-mark registration gives the trade-mark owner the exclusive right to use the trade-mark throughout Canada in association with the goods and services defined in the trade-mark registration for a period of 15 years from the date of registration.
Registration of a trade-mark can subsequently be renewed for further multiple periods of 15 years. The registration also gives the trade-mark owner the right to sue others who may be infringing the registration by using a similar trade-mark to that of the registered trade-mark.
In contrast, the rights which stem from the use of the trade-mark, otherwise known as common law rights, are limited to the territorial area in which the trade-mark has been used, or where the trade-mark owner can establish a reputation based on that trade-mark. The rights will be similarly limited in scope in association with the goods and/or services with which the trade-mark has been used.
How to Obtain a Trade-mark Registration
Any legal entity, including individuals, corporations, partnerships, joint ventures and lawful associations can apply to register a trade-mark with the Canadian Trade-marks Office. Because of the complexity of certain trade-mark matters, it is recommended that the applicant retain the services of a registered trade-mark agent to act on the applicant’s behalf.
Given the cost involved in seeking trade-mark protection, it is recommend that a preliminary trade-mark search be conducted in order to determine whether the trade-mark is available for use and/or registration in Canada. That search can be limited to the records of the Canadian Trade-marks Office or might be extended to include corporate registries, trade journals, phone books, corporate directories and the Internet in order to search trade-mark owners who may claim common law rights of their trade-marks.
Once an applicant is satisfied that it is entitled to register and use a trade-mark, the application is filed with the Canadian Trade-marks Office. Officials from the Trade-marks Office will then provide a report accepting or rejecting, all or parts, of the trade-mark application. The applicant, or the applicant’s trade-mark agent will then work with the Trade-marks Office to secure approval of the application.
Once the application has been approved by the Trade-marks Office, it is advertised in the Trade-marks Journal published by the Trade-marks Office. Any third party who believes they would be harmed by the registration of the trade-mark has the right to challenge or oppose that trade-mark. If the trade-mark is not opposed, the Trade-marks Office will approve the application, and subject to procedural requirements, the trade-mark will be registered.
Common myths:
- In Canada, there is no requirement to mark a trade-mark with either the ™ symbol or the ® designation, although it is highly advisable to do so. In that regard, the ™ symbol, and/or the french language designation MC, may be used in conjunction with any mark, sign, symbol, etc. which is being used as a trade-mark. The ® designation, and/or the french language designation MD, is limited to trade-marks which have been registered somewhere in the world. Certain jurisdictions, including theUnited States, require that a registered trade-mark be so marked with the ® designation in order for the trade-mark holder to benefit from all of the rights which flow from a trade-mark registration.
- A trade-mark is not the same as a trade name. A trade name is the name under which a business is carried on regardless of whether it is the name of a corporation, partnership or an individual. A trade name must be registered in accordance with the relevant corporate legislation. A trade name may function as a trade-mark and vice-versa if used appropriately by the owner.
- As defined by the Canadian Trade-marks Act, a trade-mark is only used in association with goods when the property or possession of the goods is transferred to a third party. A trade-mark is only used if it is associated with the services at the time they are performed or advertised. Internal use of a mark or symbol to designate a product or a program will typically not constitute use of a trade-mark for the purposes of the Trade-marks Act.
- In Canada, there is no requirement that a trade-mark owner prove that it is still using a trade-mark in order to maintain or renew a trade-mark registration. However, if challenged, a trade-mark registration may be canceled under certain circumstances if the trade-mark owner cannot prove that the trade-mark is still in use.
