What is a trademark?
A trademark 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 trademark 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 trademark has been registered by the Trademarks Office in a particular country, such as the Canadian Trademarks Office.
Is it necessary to register a trademark?
Rights of a trademark stem from registration under the Federal Trademarks Act or from use of the trademark by the trademark holder.
A Canadian trademark registration gives the trademark owner the exclusive right to use the trademark throughout Canada in association with the goods and services defined in the trademark registration for a period of 10 years from the date of registration.
Registration of a trademark can subsequently be renewed for further multiple periods of 10 years. The registration also gives the trademark owner the right to sue others who may be infringing the registration by using a similar trademark to that of the registered trademark.
In contrast, the rights which stem from the use of the trademark, otherwise known as common law rights, are limited to the territorial area in which the trademark has been used, or where the trademark owner can establish a reputation based on that trademark. The rights will be similarly limited in scope in association with the goods and/or services with which the trademark has been used.
How to Obtain a Trademark Registration
Any legal entity, including individuals, corporations, partnerships, joint ventures and lawful associations can apply to register a trademark with the Canadian Trademarks Office. Because of the complexity of certain trademark matters, it is recommended that the applicant retain the services of a registered trademark agent to act on the applicant’s behalf.
Given the cost involved in seeking trademark protection, it is recommend that a preliminary trademark search be conducted in order to determine whether the trademark is available for use and/or registration in Canada. That search can be limited to the records of the Canadian Trademarks Office or might be extended to include corporate registries, trade journals, phone books, corporate directories and the Internet in order to search trademark owners who may claim common law rights of their trademarks.
Once an applicant is satisfied that it is entitled to register and use a trademark, the application is filed with the Canadian Trademarks Office. Officials from the Trademarks Office will then provide a report accepting or rejecting, all or parts, of the trademark application. The applicant, or the applicant’s trademark agent will then work with the Trademarks Office to secure approval of the application.
Once the application has been approved by the Trademarks Office, it is advertised in the Trademarks Journal published by the Trademarks Office. Any third party who believes they would be harmed by the registration of the trademark has the right to challenge or oppose that trademark. If the trademark is not opposed, the Trademarks Office will approve the application, and subject to procedural requirements, the trademark will be registered.
- In Canada, there is no requirement to mark a trademark 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 trademark. The ® designation, and/or the French language designation MD, is limited to trademarks which have been registered somewhere in the world. Certain jurisdictions, including the United States, require that a registered trademark be so marked with the ® designation in order for the trademark holder to benefit from all of the rights which flow from a trademark registration.
- A trademark 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 trademark and vice-versa if used appropriately by the owner.
- As defined by the Canadian Trademarks Act, a trademark is only used in association with goods when the property or possession of the goods is transferred to a third party. A trademark 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 trademark for the purposes of the Trademarks Act.
- In Canada, there is no requirement that a trademark owner prove that it is still using a trademark in order to maintain or renew a trademark registration. However, if challenged, a trademark registration may be cancelled under certain circumstances if the trademark owner cannot prove that the trademark is still in use.