Trademarks

What is a Trademark?

A trademark is a word, symbol or design, or a combination of these, used to distinguish the goods or services of one person or organization from those of others in the marketplace. Trademarks have come to represent not only the wares and services themselves but also the reputation of the company. They are considered as an important intellectual property (IP) asset.
Trademarks can also comprise the emblem (logo) of the company, the shape of an object, as well as a signature.
It is interesting to know that each time that you make use of your mark in Canada or in the United States in connection with your products or services, you invest in it. Conversely, if you stop using it, it will lose its strength and could even be cancelled.

What is the difference between a Trademark and a Copyright, an Industrial Design and a Patent?

A Copyright protects original literary, musical, dramatic and artistic works. The term of a Canadian copyright is generally for the life of the author plus 50 years.
An Industrial Design deals with the original ornamentation of any article of manufacture. This includes any shape, feature or ornamentation, the object of which produces an aesthetic effect. Functional or utilitarian features may not be the subject of an industrial design but may be the subject of a patent. The initial term of an industrial design is 5 years and it is renewable for an additional 5 years but no longer.
A Patent deals with an invention, that is, a new and useful process, machine, manufacture, composition of matter or any new and useful improvement thereof. A patent is granted by the Canadian Government giving an inventor the right to exclude others from making, using or selling his invention within Canada for a period of 20 years from the filing date, and is given in exchange for a full and complete disclosure of the invention.

How long does a Trademark last?

A Trademark is registered for a period of 10 years from the date of registration. It may be renewed every 10 years without limitation. If at the end of the 10 years, you wish to continue the registration for a further 10 years, a renewal fee is payable.

Must I register my Trademark?

In Canada, as in the United States, trade-mark rights are acquired by use of the trade-mark. That is, it is not required that the mark be registered to give protection to its owner. Nevertheless, it is strongly advisable to obtain a registration because it provides additional advantages such as a national coverage, a presumption of validity after five years, a notice to third parties, etc. A registered trade-mark can be protected from improper use and from imitation by legal procedures.

Any enterprise developing or selling products or services, should seriously consider the registration of its trade-marks.
However, in most countries outside Canada and the USA, the use of an unregistered trade-mark does not give any rights over it; only its registration provides rights against third parties.
Businesses often neglect the importance of protecting their trade-marks as a part of their business strategies. Trade-marks, as well as the rest of their intellectual property, can be valuable assets in most business transactions. In fact, the goodwill attached to these marks can sometimes represent an economic value far greater than the products or services sold by the enterprise. In some cases, it is a matter of preserving the business? most precious assets. Therefore, it is profitable to register your trade-marks.
In addition, trade-marks also represent the reputation and the image of the business. Thus, it is essential to maintain them properly. In order to obtain all these considerable advantages and to prove you are the owner, it is necessary to register your marks as soon as possible and subsequently, to verify that they are not used by unauthorized third parties.

Is there such a thing as an unregistered Trademark?

Yes, those who have not registered their trademarks and have left their rights to be established by the Common Law have what is known as an unregistered trade-mark. They may register their Common Law trade-mark at any time provided they meet the requirements of the Trademarks Act.

What subject matter may not be used in a Trademark?

Such things as coats of arms of the Royal Family, badges and crests of the R.C.M.P. and the Canadian Armed Forces, the Red Cross, the Red Crescent or national symbols may not be used in trade-marks, nor may anything be used that is obviously immoral or offensive.

What is a Certification Mark?

A Certification Mark is a type of trade-mark that is used to distinguish goods or services that meet a defined standard. A good example is the ?wool mark? used on clothing to indicate the presence of a genuine wool fabric.

What is a Trade Name?

A Trade Name is the name under which any business is carried on, whether it be the name of a corporation, a partnership or an individual.

Who may obtain a Trademark?

Companies, individuals, partnerships, trade unions and lawful associations may obtain registration of their marks of identification for goods or services provided they meet the requirements of the Trade-marks Act.

Must I use my Trademark?

Yes and no; one of the requirements to register a trade-mark in Canada (or in some cases in other countries) is that the mark must be used in association with goods or services prior to being registered. However, an application for the registration of a trade-mark may be filed on the bases of proposed use before the mark has actually been used. In all cases, a registered trade-mark that is no longer in use may be cancelled at the request of any third party.

Can I assign or sell my Trademark?

Yes, you can sell or assign the rights to a registered or unregistered trade-mark, with or without the goodwill of the business. However, all changes in ownership or assignment of a registered trade-mark should be registered with the Registrar of Trade-marks.

How do I register my Trade-mark in Canada?

Here is the usual procedure:

Preliminary Search

1. The first step is to make an availability search by consulting the Canadian trade-mark database accessible via the CIPO website in order to verify if the mark you wish to register is not confusing with any other mark.The best strategy is to proceed with this search prior to the launch of your products and/or services on the market to avoid possible legal proceedings.

2. Filing of an Application

   An application can be filed even if the mark has not been used in Canada before hand, which allows the enterprise to begin protecting its mark before it is actually used in the marketplace.
   Once the application is filed, the registration process is formally under way.

3. Reception of the Official Filing Confirmation

   The CIPO assigns an application number and a filing date to your application. The application is then ready to be examined.

4. Examination

   An examiner from the CIPO verifies your application in order to determine if your mark can be registered and if all required formalities are met. If it is not the case, you will be afforded the opportunity to modify your application or argue in order to overcome any objections raised by the examiner. If everything is correct, your mark will be approved and advertised in the Trade-marks Journal.

5. Publication

   Your application is advertised in the Trade-Marks Journal. If no opposition is filed against your mark during the two months after its publication, it will be allowed. On the contrary, if your application has been opposed, it will be deferred until the resolution of the opposition.

6. Opposition (when applicable)

   You will receive a copy of the Statement of Opposition. You will have a month after its reception to file a counter statement or request an extension of time in order to do so. Then, both parties will have the right to file their evidence to justify their positions. If the opposition is withdrawn, your application will then be allowed. Written arguments can be submitted. A hearing is also possible and can be held by phone.

7. Allowance

   You should now pay the registration fees.

8. Registration

   You will receive the official Registration Certificate by mail. In Canada, a trade-mark registration is valid for 10 years after the registration date and can be renewed indefinitely for consecutive periods of 10 years.

All this process can be very long and its duration can vary depending on the obstacles that you may have to overcome. You can accelerate things by using the services of one of our trademark agents.

Can I prepare my own Trademark application?

Yes, anyone may file an application for the registration of a trademark. However, as the preparation and prosecution of a trademark application may be complex and involves the grant of a legal right, it is recommended that applicants consult a trademark agent, trained in this specialized practice and registered to practice before the Canadian Trade-Marks Office. If one intends to register his/her marks in other countries, the use of a trade-mark agent is imperative.

Let us the opportunity to assist you in the protection of your trade-mark and to advise you as to the legal ramifications involved.

We have the knowledge and the experience to obtain the maximum protection your trade-mark deserves. In addition, as surprising as it can sound at first sight, we will let you save time and money by avoiding complications (related to incorrect filing or incomplete search) and overcoming obstacles during the registration process.
Finally, the most important step, and often the most neglected, is to determine if other intellectual property rights should be secured.

Does a Trademark registered in Canada have any validity in foreign countries?

No, for the registration gives the owner exclusive use of the mark throughout Canada only.

When should I register my Trademark abroad?

If your product or service is sold in another country, you should consider registering your mark in that country. There are multinational registration systems to facilitate the process, the Community Trade-mark in Europe being an example.

It is essential to make sure your mark has not already been registered by a third party in the market you plan to enter into.
In addition, the fact of registering a trade-mark in Canada can give you a priority in its registration in Europe, the U.S.A. and other countries that have adhered to the Paris Convention if your application is produced in those countries during the six-month period after the filing of your application in Canada.
Because of our extended foreign associate network, we are able to offer a wide international coverage. Do not hesitate to communicate with us in order to elaborate the best strategy to protect your intellectual property in the countries of your choice.

Should I search the Trademarks records myself?

It will depend on the type of search you wish done. If it is for the purpose of filing a trade-mark application, one should consider having an agent do it for, as stated earlier, the filing of trade-mark application can be a tricky and complicated business, and an unskilled searcher may not be aware of all the implications of what he/she is looking at.

How long does it take to have a Trademark registered?

Normally it takes about 2 years from the date of application to the registration of a trademark in Canada. However, each application is examined on its own merits and may be affected by one or more opposition(s) or other obstacles, and so the period will vary.

If another person has a Trademark registered in Canada but he is not using it, can he stop others from using it too?

Normally, a trademark is designed to be used, and both the Trademarks Act and the Common Law tests for restraint of trade provide redress for abuse in the use of a trademark. Furthermore, any person can initiate proceedings to remove an unused trademark from the register.

Will the Trademarks Office help me if someone uses my Trademark, or one like it, in such a way that it will depreciate the value of my mark or the goodwill I attach to it?

No, the Trademarks Office does not assist in the enforcement of a registered or unregistered trade-mark. It would be advisable for you to seek legal advice in such a case. The value of the registered trademark in this case is that the owner has prima facie evidence of its use and is ownership and he/she can protect it more easily by legal action than an unregistered mark.

What is an “appellation of origin”?

An “appellation of origin” is the geographical name of a country, region or specific place which serves to designate a product originated therein, the characteristic qualities of which are due exclusively or essentially to the geographical environment, including both natural and human factors. They are often recognized by international agreement and may not be registered trademarks. A good example is the word Champagne used to designate the white, bubbly wine originated in the Champagne district of France.

Do you need help?

Although you can file an application for the registration of a trademark yourself, the preparation and prosecution of a trademark application may be complex and involves the grant of a legal right.

Let us the opportunity to assist you in the protection of your trademark and to advise you as to the legal ramifications involved.

We have the knowledge and the experience to obtain the maximum protection your trade-mark deserves. In addition, as surprising as it can sound at first sight, we will let you save time and money by avoiding complications (related to incorrect filing or incomplete search) and overcoming obstacles during the registration process.

Finally, the most important step, and often the most neglected, is to determine if other intellectual property rights should be secured.

We will be glad to meet with you, to offer you an introduction to intellectual property concepts and to evaluate your needs. You will discover your assets to be more important than you had thought.

Finally, if you want to learn more about the benefits of registering a trademark, do not hesitate to contact one of our agents.

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