TRADEMARKS

We can provide you with a full range of trade-mark related services, including counselling on trade-mark strategies and branding, preparing and filing Canadian and foreign trademark applications, prosecution of your trade-mark application, renewal of your trade-mark registration, litigation to enforce trade-mark rights including domain-name disputes or defend against alleged infringement, licensing, and the transfer of ownership in trade-marks.

In order to help our clients understand the trade-mark system and process, we provide the following brief outline of the nature of trade-marks and the process of obtaining a trade-mark in Canada.

A trade-mark is any word, phrase, logo, symbol, design, alphanumeric grouping, or combination thereof, adopted and displayed on wares or associated with services, and used for the purpose of identifying the products or services, and to distinguish them from the wares or services of others. The primary purpose of a trade-mark is as a source indicator, to prevent consumers from becoming confused about the source or origin of the product or service. A trade-mark generally indicates that the wares or services come from the same source as all other wares or services associated with the same mark. A trade-mark serves to symbolize the quality or characteristics of a product or service. 

A trade-name, not to be confused with a trade-mark, is a name under which a particular business is carried on, whether by an individual, partnership, or company. A trade-name displayed on wares or associated with services may also function as a trade-mark. 

A distinguishing guise is the shaping of wares or their containers, or the mode of their wrapping or packaging, to the extent that these are distinctive. A distinguishing guise identifies the unique shape of a product or a package. For example, the shape of a particular bottle, or the shape of a pill is a distinguishing guise and may be a trade-mark. A distinguishing guise trademark may allow you to protect the unique shape of your product or package. 

Another type of trade-mark is a Certification Mark. Certification marks identify products or services that meet a defined standard (e.g. the Woolmark design on clothing). Generally, the owner of a certification mark licenses others the use of the mark in association with goods or services that meet a defined standard. 

Aside from creating rights by registering a mark, certain rights are created by actual “use” of the trade-mark on wares or in association with services, or making-known that trade-mark in Canada (these rights are referred to as common lawݠrights). Absent an registered trade-mark, if an owner can establish that the general public recognizes the trade-mark, then the owner has rights in that trade-mark and can prevent others from using a confusingly similar mark. 

Although it is not necessary to register a trade-mark since as soon as a trade-mark is properly used common law rights arise, such rights are generally weak rights compared to the rights for a registered trade-mark. The common law rights that arise upon mere use of the trade-mark are restricted to the geographical region in which the trade-mark is used, or where the owner can establish a reputation in that trade-mark. Common law trade-mark rights give rise to the suit known as passing off,ݠwhich also codified in section 7 of the Trade-marks Act.

What are the advantages of registration?

Although it is not necessary to register a trade-mark in order to use it there are, nevertheless, some important advantages if one does register, including:

• a registered trade-mark can be enforced throughout Canada, whereas an unregistered trade-mark can be enforced only in those areas where it has been used to establish a beneficial reputation (referred to as goodwill;

• the owner of a registered trade-mark may initiate infringement proceedings in either the provincial or federal courts, whereas the owner of an unregistered trade-mark may not initiate trade-mark infringement proceedings, but must rely on passing offݠproceedings; 

• after a trade-mark has been registered for five years it generally cannot be challenged on the basis that another party used it, whereas there is no such similar cutoff for an unregistered trade-mark;

• a Canadian trade-mark registration can be used to claim priority in registering the trademark in foreign countries, whereas trade-marks protected merely by common law rights have no such advantage.