What is a trademark?

A trademark is a word, logo, symbol or design (or a combination of these elements) that is used by a person or a business to distinguish its wares and services from the wares and services of others.

What cannot be registered as a trademark in Canada?

  • words that are primarily a name or a surname
  • words that designate a geographic place of origin or that mislead the public into thinking that the goods and services emanate from a particular place
  • words that are clearly descriptive (or deceptively misdescriptive) of the character or quality of the wares or services associated with the trademark
  • words that are the name (in any language) of the wares or services
  • a mark that is confusingly similar to another trademark
  • a mark that is prohibited either because it is a public mark or because it is a mark which has become recognized in Canada as designating the kind, quality, quantity, place of origin of any wares or services.

What constitutes a strong trademark?

Generally, the strongest and most “inherently distinctive” trademarks consist of words that are: (a) non-descriptive; (b) coined or invented; and (c) unique.  For example: EXXON ®, XEROX ®, KODAK ®.  Other good choices may be dictionary words that bear no relation to the product, industry or field, such as APPLE ® for computers, RED ROSE®  for tea.
A weak mark is a mark that has a clear connection with, or is descriptive of the wares and services. For example: ALL BRAN for cereal, or FLORIDA for orange juice.
By selecting a trademark that is non-descriptive, unique, and preferably coined, you increase the sphere of protection for your trademark and minimize the risk that your trademark will infringe other trademarks in the marketplace.

What is the difference between a trademark and a trade name?

A trade name is a name under which a sole proprietor or a company carries on business.  It may be the corporate name of a company or a business name registered with provincial authorities.

Registration of a business name does not protect that company name as a trademark, nor does it preclude others from using, or even registering, similar business names. Moreover,  a business name registration does not guarantee that the name can be used in the Canadian marketplace.

Without a trademark registration, a trade name owner’s sole remedy against use of a confusingly similar trade name is an action for passing off.  However, such an action will only be successful if the owner of the trade name can establish that it has a reputation in the same geographic area where the defendant is carrying on business.

By contrast, the owner of a registered trademark may restrain the use of a confusing trademark or trade name anywhere in Canada, even if it cannot prove that it has a reputation where the infringing party is using the name/mark.

What are the benefits of a trademark registration?

While it is not mandatory to register a trademark, the scope of protection for unregistered marks is limited to the geographic area where the owner has an established reputation and a degree of goodwill associated with the mark.

Below are some advantages of a trademark registration:

  • a registration provides you with the exclusive right to use the mark across Canada in relation to the goods and services specified in your registration, and provides you with the ability to stop a third party from using a confusing trademark or trade name
  • registration offers tangible proof of your ownership rights
  • once a trademark has been registered for five or more years, it cannot be challenged on the basis that another person used it first
  • registration gives you access to several statutory remedies under the Trademarks Act, such as the right to sue for depreciation of goodwill and infringement
  • registration provides public notice of your trademark, thereby alerting third parties and deterring them from adopting and using a confusing trademark. Also, the Trademarks Office will refuse applications to register marks that are confusingly similar to a registered trademark
  • a registration may be useful in protecting a domain name
  • finally, registration of a trademark in Canada facilitates your ability to obtain a corresponding registration in foreign jurisdictions.

What trademark markings/notices should I apply to my products or advertising materials?

While there are no statutory marking requirements in Canada, it is nonetheless a good idea to use trademark symbols,  particularly if the trademark is used by licensees of the trademark owner.

The symbols TM (trademark) and MC (marque de commerce) may be used on any trademark, whether or not it is registered.  The ® and the MD (marque déposée) symbols should only be used if the mark is registered.

Trademark symbols should appear prominently on labels, packaging and advertising materials.  There is no specific format for trademark notices, however, the notice should identify the owner’s name and, if applicable, the licensee’s name.  For examples:

  • ® – Registered Trademark of ABC Inc., used under license by XYZ Inc.
  • ® – Marque déposée de ABC Inc., utilisée sous license par XYZ Inc.
  • TM – Trademark of ABC Inc., used under license by XYZ Inc.
  • MC- Marque de ABC Inc., utilisée sous license par XYZ Inc.
 

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