WHAT IS A TRADE-MARK?
A trade-mark is a word, a symbol, a design (or a combination of these features), used to distinguish the wares or services of one person or organization from those of others in the marketplace. In other words, it is legal and business tool that allows you to have a unique identity in the marketplace.
Trade-marks come to represent not only actual wares and services, but also the reputation of the producer. As such, they are considered valuable intellectual property. A registered trade-mark can be protected through legal proceedings from misuse and imitation.
A trade-mark can be any special element used to promote and distinguish your business and the services and products you sell. This means that a trade-mark could be a logo, a name, a slogan, colours, packaging or sounds.
You can also trade-mark a description that is not typically associated with a product or service so along as the description is not misleading and original coined terms that don’t have a dictionary definition.
Business and company names that are too descriptive, using words or practices that are commonly used do not usually qualify and make for weaker marks in any event.
Examples of well-known trade-marks include the CBC logo, Molson’s “I am Canadian” slogan, and the Vancouver Canucks logo and name that appears in the player’s jerseys.
As you well know, these logos, names and slogans become synonymous with each brands identity
Who can register a trade-mark?
Companies, individuals, partnerships, trade unions and lawful associations may obtain registration of their marks of identification for wares or services, provided they meet the requirements of the Trade-marks Act and Regulations.
Should you register a trade-mark?
Just as a marriage can be registered officially or remain common-law, so can a trade-mark. That means a trade-mark exists and you have legal rights around it as soon as you start using it. But, a common-law trade-mark does not offer the same legal protection as a registered trade-mark and so it is highly recommended that you register your trade-mark to ensure that you have the greatest legal protection and avoid legal issues down the road.
Registration of your trade-mark gives you the exclusive right to use the mark across Canada for 15 years, renewable every 15 years thereafter. If you wish to apply for a trade-mark in other countries, you must apply to the country in which you seek registration.
Registration is prima facie, or “at first sight” evidence of your ownership. In a dispute, the registered trade-mark owner does not have to prove ownership of the trade-mark as it is initially assumed that the registered trade-mark is indeed the owner. It is the responsibility of the person or entity challenging your use of the trade-mark to prove that it is in fact the owner, which is difficult to do if the person or entity is not the registered owner. Use of an unregistered trade-mark can lead to a lengthy, expensive legal dispute over who has the right to use it.
Consider this scenario: For the past five years you have been operating a highly successful ice cream emporium under the word “Northpole” in your home town of Nova Scotia. You have never heard of another Northpole and you have never bothered with trade-mark registration. Meanwhile, an Ontario firm has registered the trade-mark “Northpole” to identify its growing chain of spaghetti diners and home brand tomato sauce. While conducting research for a Maritime expansion plan, the Ontario firm discovers your store and serves you with a lawsuit. Depending on the facts established with the Court, this may result in a court order preventing you from using the word “Northpole.” This development couldn’t come at a worse time, since you were just planning to expand your own business. The situation could have been avoided if you had solidified your clear rights to the trade-mark through registration.
Keep in mind also that a registered trade-mark is a valuable asset for business expansion through licensing franchises. Note as well that if you fail to use the mark for an extended period, your registration may be cancelled.
How to file an application to register a trade-mark
To apply for a trade-mark registration, an application is filed together with the appropriate documentation and fee to the Canadian Intellectual Property Office (CIPO). The application undergoes stringent examination to ensure it meets the requirements of the Trade-marks Act.
Preparing a trade-mark application and following through on it can be a complex task, particularly if a third party challenges your right to the mark. You may file on your own, but it is highly recommended that you hire a trade-mark agent to do so on your behalf.
In order to become a trade-mark agent, a Canadian resident must have worked in the field of trade-marks for at least 24 months, and have passed the qualifying examination. A resident of Canada who is a barrister or solicitor, or a notary in the Province of Quebec, may become a trade- mark agent by passing the qualifying examination or working in the area of trade-mark law for at least 24 months.
An experienced, competent trade-mark agent who is well-briefed can save you problems caused by such obstacles as a poorly-prepared application or inadequate research. If you intend to register marks in other countries, the use of a trade-mark agent is even more strongly recommended.
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