TRADEMARKS TOOLKIT

A trademark is used to identify the source of a product or service. A trade name is the name under which a business operates.

A trade name can also function as a trademark, when used as an adjective. To put it into context: if you were to purchase light bulbs from Coastal Inc., Coastal Inc. is being used as a trade name. If you were to purchase Coastal brand light bulbs, Coastal is considered a trademark.  

A common misconception is that registering a trade name, or incorporating a business, provides all-encompassing rights in the name, including trademarks.  In fact, registering a trade name or corporate name alone does not prevent other companies from using the same name as a trademark, nor does it guarantee that you are entitled to use the name as a trademark.

There is no legal requirement to register your trademark; however, there are distinct advantages:

• Expanded geographic protection. Some trademark rights are acquired through use of the mark in the marketplace; however, these rights are limited to the area within which the mark is being used. Registration of your trademark will provide you with protection of your mark throughout Canada, regardless of where you are using your mark.  
• Proof of ownership. A registered trademark provides you the right to sue for trademark infringement, should a competitor copy or imitate your mark.  When suing for trademark infringement, reputation does not need to be established.  Your trademark registration is your proof of ownership in the event of a legal dispute.
• Increased legal advantages. Trademark registration also affords you a number of other legal advantages, including the right to sue for depreciation of goodwill and the right to proceed to the Federal Court of Canada to obtain a nationwide injunction.
• Incontestable after five years. Typically, registered trademarks become incontestable after five years. That is, your rights in the trademark cannot be challenged after five years based on prior use of a confusing mark, provided you were not aware of that prior use. This benefit does not extend to unregistered marks.
• Trademarks Office will help protect your mark. Once you file an application for registration, your application should block others from registering confusingly similar marks if they have a later filing date. There will often be no need for you to take any action in this process, particularly in clear cases of confusion.
• Deterrent strategy. Registering your mark may deter others from using an identical or similar mark. When a third party conducts a proper trademark search for a confusing mark, they should be alerted to the existence of your registered trademark. This will often be enough to deter them from using the confusing mark. 

The following are examples of the types of marks that can be refused registration:

• Marks that are likely to cause confusion with registrations or prior-filed applications
• Marks that are clearly descriptive or deceptively misdescriptive of the associated goods or services
• Laudatory terms (WORLD’S BEST, ORIGINAL, ULTIMATE, TERRIFIC)
• Geographic names
• Marks that are primarily merely a name or surname;
• The name of the goods or services in any language (generic marks); 
• Generic designs (an ordinary representation of grapes for use with wine)

There are exceptions to some of these rules; therefore, it is best to consult with a Registered Trademark Agent regarding your particular situation.

Your trademark is an important business asset that should be properly protected. Registering a trademark can be a complex task. An experienced Trademark Agent has the knowledge to file a trademark application that will best protect your brand and to address conflicts and challenges that may arise during the registration process. They can save you time and money by avoiding issues that result from improperly filed applications or inadequate research. A Trademark Agent will also monitor all deadlines associated with your application to prevent inadvertent loss of rights.

A careful trademark search is a proactive step to mitigate possible risks to your brand identity. At a minimum, a trademark search should be conducted to determine if another party holds the same trademark or trade name or one similar enough to cause conflict. 

If another business is using or has registered a similar name, logo, or slogan, using your proposed mark could lead to confusion and costly legal battles. Having to change a trademark after you have started using it can be expensive, disruptive to business, and can waste the goodwill you have acquired in the brand.  

A trademark search has the most value when it is performed before you start to use the trademark. By performing a search early on, it will be easier to change course and choose a new mark if a search discloses a major obstacle.

If you are already using a trademark, it is a good idea to do a search before filing a trademark application. If the search discloses any conflicting marks, your trademark agent may be able to develop a strategy for addressing the conflicts, including monitoring important opposition deadlines to preserve your rights.

If you already own a trademark registration but want to expand your business to a new field, a trademark search should be conducted before using the mark with the new goods or services. A search will help determine whether the path is clear to move into the new line of business with your current trademark. 

Periodic trademark searches are also useful after registration, to determine if other parties are attempting to register a conflicting trademark. 

Step 1: An application for registration is filed with the Canadian Trademarks Office.

Step 2: A search for conflicting trademarks is performed by the Trademarks Office and the application is reviewed by a Trademark Office examiner for compliance with theTrademarks Act. Any issues discovered in the examination of the application will be raised in examiner’s reports to which we must respond.

Step 3: If no objections are made, or once any objections by the Office are overcome, the mark will be approved and then advertised in the Trademarks Journal. This provides an opportunity for third parties to oppose the application should they feel it is not registrable.

Step 4: If no one opposes your application, or once any oppositions are resolved in your favour, your application will proceed to registration for a 10-year term.

No. Canada does not require the use of a trademark to obtain a registration, provided the owner has a bona fide intention to use the mark with the goods and services listed in the application.

That said, you should use the mark within three years of registration and continuously thereafter to prevent cancellation by third parties. 

A Canadian trademark registration lasts for 10 years from the registration date. It can be renewed indefinitely provided the applicable fees are submitted to the Trademarks Office every 10 years following registration.