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What is a trade-mark?
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?
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
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.