What is a Trademark?
A trademark is used by a business or other entity to distinguish its products or services from those of others. A trademark is typically a word, phrase, slogan, logo, or design but can also be the distinctive shape of a container, product packaging or anything that serves to distinguish the source of products or services.
Why is a Trademark Important?
A trademark is often the most public aspect of a business. A strong trademark has a high degree of distinctiveness and helps protect the goodwill of the business. A trademark is a business asset that others may wish to buy or licence.
Trademark vs. Trade Name / Corporate Name / Domain Name
A trade name (or business name or corporate name) is the name under which you carry on business. A trade name identifies your business, whereas a trademark identifies the source of your products and services. A trade name may also be a trademark but only if it is used as a trademark.
Trademark rights in a corporate name may arise in the geographical areas where it has been substantially used, and do arise from a trademark registration (discussed below) but do not arise from the incorporation itself.
Domain names are used to denote a particular internet protocol address, for example as a website or email address. A domain name can function as a trademark, but only if it is used as a trademark.
The Registration Process
Step One – Is Registration Worthwhile?
A registration under the Federal Trademarks Act gives the owner the exclusive right to use a trademark throughout Canada in association with the wares or services covered by the registration. Use across Canada is not a prerequisite to registration: it is only necessary to have used the trademark somewhere in Canada.
The initial term of a registration is 15 years and is renewable for further 15 year terms if you continue to use the trademark somewhere in Canada. Registration is cost effective. Amortized over the 15 year term, the cost of registering a trademark is about $100 a year.
A registration is not conclusive of the owner’s legal rights and may be attacked on several bases (e.g., improper licensing of the mark). But without registration, your plans for market expansion or franchising may be hampered by any party who has superior rights in the trademark in geographical areas where you do not have prior substantial use of the trademark.
Step Two – The Trademark – Determining Registrability
A trademark cannot be registered if it is:
- confusing with a registered trademark or a trademark for which an application has been previously filed;
- primarily merely a name or surname of an individual;
- clearly descriptive or deceptively misdescriptive of the wares or services;
- the name of the wares or services in any language; or
- a prohibited mark (e.g., the national flag of a country or Red Cross emblem).
Step Three – The Search
Before entering a new business or introducing a new product, it is always useful to conduct market research (to identify your potential competitors, to give insight into the channels of trade, and the like). A trademark search (for at least registrations and applications to register marks that are confusing with your proposed trademark) should be an integral part of your market research. A search and our opinion of registrability takes about one to two weeks.
If the search results are unfavourable (e.g., a competitor has registered the proposed mark or a confusing variation, the “problem mark”), then you can: (1) appropriately tune your marketing strategies; (2) change the proposed mark to minimize similarities with the problem mark or choose a new mark altogether; (3) attack the problem mark; or (4) attempt to buy or licence the problem mark. If the search results are favourable, then you should apply to register the trademark.
Step Four – Filing The Application
You can apply based on prior use of a trademark in Canada or based on proposed use in Canada, among other things.
Step Five – Examination
A Trademark Office Examiner will review your application and may reject it because the trademark is prohibited or unregistrable. If an Examiner rejects, you may counter with arguments. The interaction with the Examiner often take several months, if not longer, and in the worst case, the Examiner may maintain the rejection.
Step Six – Opposition
If the Examiner thinks that your mark is registrable and that your application is otherwise in order, the Trademarks Office will publish your application in the Trademarks Journal. At this stage, a third party may oppose registration of your trademark. If an opposition is begun, you may: (1) contest the opposition; (2) settle with the opponent; or (3) abandon the application. If no opposition is commenced (or, if commenced, is resolved in your favour), the Trademarks Office will approve your application.
Step Seven – Registration
You must pay a registration fee and, if you applied based on proposed use, you must also use the mark (somewhere) in Canada and file a declaration of such use. Without complications, an application takes about 15 months from filing to registration.
For more information, please contact Neil Melliship.