2016.07

Making Your Mark: A Preliminary on Trademarks

By: Derwin Wong

This blog entry provides an overview on trademarks: what they are, how they work, and whether you should consider registering your mark. 

What is a Trademark?

Subway Eat Fresh.  The Passion that Unites Us All.  Coca-Cola.  Always So Good for So Little.

All of the above are registered trademarks found in the Canadian Trade-Mark Database.  The Canadian Intellectual Property Office (“CIPO”), the government body responsible for oversight of all trademark registrations in Canada, defines a trademark as “a combination of letters, words, sounds or designs that distinguishes one company’s goods or services from those of others in the marketplace”.  As you can see from the above examples, they can be in relation to, among other things, a product, a tagline, or a tradename.  Trademarks are also not limited to words.  You are likely familiar with the Nike swoosh or the unique shape of a bottle of Coca-Cola – both are  trademarks.

Trademarks often conjure a connection to a brand without the need to even see the owner’s name.  For example, when you see the golden arches, you think of McDonald’s.  You likely already know that “Always So Good for So Little” is associated with the restaurant Swiss Chalet. 

A trademark is a representation of your brand and your business.  It is unique to its owner and is a valuable asset.

How Do Trademarks Work?

Before proceeding with an application for registration of a trademark, you should obtain a preliminary review of whether the trademark is available or has already been registered by another party.  If the trademark appears to be available, you may submit an application for registration.  Once you have passed through all of the required stages of a trademark application (the details of which are outside the scope of this blog) and your trademark is successfully registered, you have the sole and exclusive right to use the trademark anywhere in Canada for 15 years, with the option to renew every 15 years.  Registering a trademark prevents others from using your mark, or a confusingly similar mark, in association with their goods and services.

While you do not necessarily have to register, as you can come to own the mark through usage in common law, in the event of a dispute, an unregistered mark is easily challenged and thus more costly to defend than a registered mark.  You may be involved in lengthy litigation that results in you being forced to change your trademark.  A registered trademark may also be considered constructive notice to all others that you own the mark.

A word of caution: you must actually use the mark in Canada.  If you do not use the mark, the registration may be invalidated by the Register of Trademarks.

Should I Register My Trademark?

While the answer is dependent on the fact situation, if you have a unique mark attaching to your business and want to protect the mark so that no one else can use it, we recommend that you register the trademark.  That said, if it falls into any one of the following non-exhaustive categories, subject to certain exceptions, you cannot register the mark:

  • names and surnames (example: you cannot register the name or “Smith” alone);
  • clearly descriptive marks (example: if you sell apples, you cannot register “Red Apples”);
  • deceptively misdescriptive marks (example: you cannot register a trademark using “saltwater” if your product is related to fresh water only);
  • words that represent a geographical location commonly known to be the place of origin of such goods or services (ex. “Napa Valley Wine”);
  • words in other languages (only French and English are acceptable);
  • words or designs that could be confused with a registered trademark or pending trademark; and
  • words or designs that look very similar to a prohibited mark.

When you decide to proceed with registering a trademark, you should select a trademark agent who is familiar with the application process, the law, and CIPO.  Choosing a qualified, registered trademark agent upfront will save you time and costs.

If you are interested in registering a trademark or learning more about how a trademark can enhance your business value, contact Derwin Wong or Hailey Kersey by phone at (416) 368-0600 or by email at dwong@businesslawyers.com or hkersey@businesslayers.com.

© Morrison Brown Sosnovitch LLP, 2016. All rights reserved.

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