Trade-marks

What is a trade-mark?

A trade-mark is any word, phrase, logo, symbol, design, alphanumeric grouping, or combination thereof, adopted and displayed on wares or associated with services, and used for the purpose of identifying the products or services, and to distinguish them from the wares or services of others.

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

A trade-mark serves to symbolize the quality or characteristics of a product or service.

Trade-name

A trade-name, not to be confused with a trade-mark is a name under which a particular business is carried on, whether by an individual, partnership or company. A trade-name displayed on wares or associated with services may also function as a trade-mark.

Certification Marks

Another type of trade-mark is a Certification Mark. Certification Marks identify products or services that meet a defined standard (e.g. the Woolmark design on clothing). Generally, the owner of a Certification Mark licenses to others the use of the mark in association with goods or services that meet a defined standard.

Distinguishing Guise

A distinguishing guise is the shaping of wares or their containers, or the mode of their wrapping or packaging, to the extent that these are distinctive. A distinguishing guise identifies the unique shape of a product or a package. For example, the shape of a particular bottle, or the shape of a pill may be a trade-mark. A distinguishing guise trade-mark may allow you to protect the unique shape of your product or package.

Creating rights in a trade-mark

Aside from creating rights by registering a mark, at common law trade-mark rights are created by actual "use" of the trade-mark on wares or in association with services, or making-known that trade-mark in Canada. If an owner can establish that the general public recognizes the trade-mark, then the owner has rights in that trade-mark and can prevent others from using a confusingly similar mark.

Should you register your trade-mark?

It is not necessary to register a trade-mark. As soon as a trade-mark is properly used, common law trade-mark rights arise. Nevertheless, these rights are generally weak rights compared to the rights for a registered mark. At common law the trade-mark owner's rights are restricted to the geographical region in which the mark is used, or where the owner can establish a reputation in that trade-mark. Common law trade-mark rights give rise to an action in the tort of "passing off", codified in section 7 of the Trade-marks Act.

What are the advantages of registration?

It is not necessary to register a trade-mark in order to use it, but there are some important advantages if you do register. 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 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.

Registering a trade-mark

The following are the various stages in registering a trade-mark in Canada:

1. Filing

   In Canada, a trade-mark application may be filed based on:

   1. use or making-known in Canada;
   2. foreign use and application/registration;
   3. proposed use in Canada; or
   4. any combination thereof.

2. Formalities

   After an application has been filed/submitted, your application receives a filing date, and an application number from the Trade-marks Office, and a file will be created. The application will be entered on the Trade-marks Database and other databases maintained by external companies. Your application is now described as 'Pending' and moves to examination. You will receive a formal filing acknowledgement and a proof sheet showing all the information about your application.

3. Examination

   The trade-mark examiners make an initial determination as to the registrability (section 12 and section 30 of the Trade-marks Act) of the trade-mark, reviewing the application and ensuring that:

   1. the mark is not the name or surname of an individual who is living or has died within the preceding thirty years;
   2. the mark is not clearly descriptive or deceptively misdescriptive of the character or quality of the wares or services in association with which it is used or proposed to be used;
   3. the mark is not a common generic term;
   4. the mark is not confused with a registered trade-mark;
   5. the mark is not prohibited by section 9 or section 10 of the Trade-marks Act;
   6. the mark is not a geographical indication;
   7. the wares or services therein are described in ordinary commercial terms.

   The trade-marks examiner will then issue an Official Action or Examiner's Report detailing any deficiencies or objections to the application. If it cannot be approved, you will be advised as to why and may be able to amend certain aspects of your application so it can be approved. You may also submit arguments if the trade-marks examiner has objected to your application. When and if your application is approved, you will receive a formal notice of approval.

4. Advertisement

   If it is approved, your application will be published in one issue of the Trade-marks Journal. Within 2 months of being advertised your application can be opposed by someone else and will then be removed from the normal processing cycle until the opposition has been resolved.

5. Allowance

   If no opposition is filed, the application is allowed. You will receive a notice that your application has been allowed for registration. This does not mean your trade-mark is registered - you have to submit the required registration fee of $200 for the mark to be registered. If your application is for a proposed mark you may request extensions of time until your mark is actually in use.

6. Opposition

   If your application is opposed after being advertised in the Trade-marks Journal, the Opposition Board will forward to you a copy of the Statement of Opposition. Should you wish to contest the opposition, you will have one month to serve and file a Counter Statement. Both parties will, in turn, have an opportunity to file affidavit evidence and written arguments, as well as to make submissions at an oral hearing.

7. Registration

   You must send in the registration fee and, if you applied for a proposed trade-mark, a declaration of use indicating that the mark is being used. Your trade-mark now moves from 'Pending' status and becomes a 'Registered trade-mark'. The Registrar will then issue you a Certificate of Registration that includes the registration number and registration date, as well as the filing particulars. Registration is valid for a period of 15 years from the date of registration and is renewable indefinitely for additional 15 year terms.

What can Heydary Hamilton PC do for you?

Heydary Hamilton PC can provide you with a full range of trade-mark related services, including counseling on trade-mark strategies and branding, preparing and filing Canadian and foreign trade-mark applications, prosecution of your trade-mark application, renewal of your trade-mark registration, litigation to enforce trade-mark rights including domain-name disputes, defence against alleged infringement, licensing and the transfer of ownership in trade-marks.

For our current rates for the registration of a trade-mark, visit our fees promotion page for technology matters.

IMPORTANT LINKS

Heydary Hamilton PC Trade-mark Fees
Canadian Trade-marks Act
Canadian Intellectual Property Office
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Confidential Information and Trade-Secrets
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