IP Basics

Trade-marks Basics and Registration Procedure in Canada

What is a Trade-mark?

A trade-mark is a symbol that distinguishes one trader's products or services from those of a competitor. The symbol can consist of a word or design or a combination of words and/or designs.

Trade-marks can be used in association with products (wares) such as detergent or toothpaste, or with services such as restaurant services or computer repair services. A trade-mark indicates the source of the wares or services to purchasers. In addition to distinguishing wares/services among competitors, a trade-mark can acquire goodwill, and often becomes a significant business asset in its own right.

In Canada, trade-mark rights arise through use of the mark. Broader rights can also be obtained by registering a trade-mark.

Why Register a Trade-mark?

The main advantage to having a registered trade-mark is that it is deemed to be valid across Canada. In contrast, the owner of a mark that is merely being used, and has not been registered, must prove that the mark has acquired a reputation, and the protection afforded to such a mark will be limited to the geographic area in which reputation and use can be proven.

The owner of a registered trade-mark can also enforce rights in that mark by suing for infringement, whereas the owner of a non-registered mark must rely on passing off, which is more difficult to prove.

A registered trade-mark has a term of 15 years, which can be renewed as long as use of the mark continues.

Use of a Trade-mark

Proper use of a trade-mark is critical to preserve the validity of the mark. With respect to wares, a trade-mark is used if it is marked on the wares themselves or on the packages in which they are distributed. The use must be normal commercial use. For example, placing a trade-mark on a box of laundry detergent and having that box sold in the grocery store constitutes use of that mark in association with laundry detergent. With respect to services, a trade-mark is used when it is displayed in the performance of the services or in the advertising of the services, provided that those advertised services are available in Canada.

In Canada, the symbol TM (™) may be used to designate a non-registered trade-mark, and a capital R (®) in a circle may be used to designate a registered trade-mark.

Application for Registration of a Trade-mark

To obtain a registration under the Trade-marks Act, an application for registration of a trade-mark must be filed with the Trade-marks Office of the Canadian Intellectual Property Office. The application must include the requisite government filing fee and must set out certain information, including the name of the applicant, the address of the applicant's principal office or place of business, the mark, and the wares and/or services with which the mark is to be associated. In Canada, the application can be based on actual use of the mark, proposed use of the mark, or the use and registration of the trade-mark in another country.

Priority

The application can claim priority on certain foreign applications, so long as the Canadian application is filed within 6 months of the foreign application.

Examination

The Trade-marks Office examines the application and can either allow the application to be advertised or can object to registration of the mark. Objections can be raised on various grounds of non-registrability. For example, the Trade-marks Office will object if, in its view, the subject mark is confusing with another mark. There are other types of objections that can be raised. In order to determine the chances of success of having a mark registered, searches can be conducted and an opinion provided before filing an application.

If there are no objections by the Trade-marks Office or if all objections have been satisfied, the application will proceed to advertisement, thereby giving notice to all that the mark has been approved. If there is no opposition to the mark, the application will proceed to registration. In the case of applications based on proposed use, the application will not issue to registration until a declaration of use is filed, outlining the use of the mark in respect of the wares/services listed in the application. In any case, the requisite government fee must be paid before an approved application will issue to registration.

Opposition

A third party can oppose the registration of a trade-mark by instituting opposition proceedings within two months of the advertisement of an application. This initiates a process culminating in a hearing before the Trade-marks Opposition Board. If an opponent is successful, the application will be refused. If the applicant is successful, the application will proceed to registration.

Summary

1. A trade-mark is a valuable business asset.
2. Prior to launching a product or service with a particular trade-mark, a clearance search should be done and an opinion given with respect to the availability of that mark.
3. Once a mark has been cleared, an application for registration should be filed.
4. The mark should be used properly.
5. A trade-mark owner should monitor the marketplace to ensure that competitors are not using confusingly similar marks.

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