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What is a trade-mark?

A trademark is any word, phrase, logo, symbol, design, alphanumeric grouping, or combination thereof, adopted and used in association with on wares / goods / merchandise or associated with services, and used for the purpose of identifying the products or services, and to distinguish them from the wares / goods / merchandise or the services of others.

The primary purpose of a trademark is as a source indicator, to prevent consumers from becoming confused about the source or origin of the product or service. A trademark generally indicates that the wares / goods / merchandise or services come from the same source as all other wares / goods / merchandise or services associated with the same mark.

Aside from creating rights by registering a mark, rights may be conferred by the common law through the commercial “use” of the trademark in association with wares / goods / merchandise, in association with services, or by making the trademark known that in Canada. If an owner can establish that the general public recognizes the trademark, then the owner has rights in that trademark and can prevent others from using a confusingly similar mark.

Should you register your trade-mark?

While rights may be conferred by the common law, those rights are generally weak and limited in geographic scope as compared to the rights for a registered trade mark.

What are the advantages of registration?

Registration does have its benefits, namely:

• A registered mark can be enforced throughout Canada, whereas an unregistered mark can be enforced only in those areas where it has been used to establish in goodwill;
• An 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 off” proceedings;
• After a trade mark has been registered for five years, it cannot generally be challenged on the basis that another party used it;
• Canadian trade mark registration can be used to claim priority in registering the trade mark in foreign countries.