What is a trademark?
A trademark is a word, logo, symbol, design, or a combination thereof,
displayed on wares or associated with services, to identify the wares or
services to purchasers. The trademark generally indicates that the wares or
services come from, or are approved or sponsored by, the same source as all
other wares or services associated with the same trademark. A trademark may
also indicate that the wares or services meet the same standard of quality
as all other wares or services associated with the same trademark.
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What is a trade name?
A trade name is a name under which a particular business is carried on by an
individual, partnership or company. It may be the corporate name of the
company carrying on the business. A trade name displayed on wares or
associated with services, may also function as a trademark.
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How are trademark rights created?
In Canada, trademark rights are created by actual "use" of the trademark on
wares or in association with services. Sale of wares in packages bearing the
trademark or provision of services described in advertising which displays
the trademark are examples of trademark "use." In some countries, trademark
rights are created solely by registration, even if the mark is not actually
used.
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Who wins if two parties choose similar marks?
In general, the party who first uses the trademark in respect of certain
wares or services, anywhere in Canada, is entitled to register the mark and
obtain exclusive rights to use it with those wares or services.
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May I "reserve" a trademark before I'm ready to use it?
Yes, assuming that no one else is using the same or a similar trademark. In
such a case, you may apply to register the trademark on the basis of an
intent to use it (also called "proposed use") at some unspecified future
date. You will then have priority in the trademark, even if someone else
subsequently attempts to use it before you are ready to do so.
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What are the advantages of a trademark registration?
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A registered mark can be enforced throughout Canada, regardless of whether
it is being used or enjoys goodwill in any particular area. An unregistered
mark can be enforced only in those areas where it has been used sufficiently
extensively to establish goodwill.
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Many parties search the Trademarks Register as an aid to selecting new
trademarks. If your mark is registered, competitors who conduct such
searches are much less likely to unwittingly choose a mark that conflicts
with yours, thus nipping potential infringement disputes in the bud.
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The Trademarks Office itself often refuses applications to register
trademarks which are likely to be confused with previously registered
trademarks. This can also curtail problems, if your trademark is registered.
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The owner of a registered trademark may initiate infringement proceedings in
either the provincial or federal courts. The owner of an unregistered
trademark may not initiate trademark infringement proceedings, but must rely
on "passing off" proceedings, which subject a plaintiff to a more onerous
burden of proof.
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After a trademark has been registered for five years it cannot be challenged
on the basis that another party used it first (unless the owner of the
registered trademark knew of the other party's use before adopting the
trademark). This "incontestability" provision can be quite valuable, since
one can never be absolutely sure what unregistered trademarks might be in
use somewhere in Canada.
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A Canadian trademark registration can be used to claim priority in
registering the trademark in foreign countries, but foreign registration may
not be possible if the mark is unregistered in Canada.
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When should I apply to register a
trademark?
As soon as possible. Subject to the results of a registrability search, a
trademark application should be filed promptly, especially if the
application is to be based on "intent" to use the trademark in Canada. Such
applications have priority as of the date on which they are filed in the
Trademarks Office. If there is a concern that another party may file a
conflicting application, it may even be advisable to accept the risk of
filing an application without waiting even one day for the results of a
registrability search. Even if the application is able to assert the benefit
of several years' use of the trademark important benefits can be gained by
filing promptly.
Trademark registrability searches
Before you apply to register your trademark, it is advisable to conduct a
registrability search. As a minimum, the search should cover the records of
registered trademarks and pending trademark applications maintained by the
Canadian Trademarks Office. The search objective is to assess the potential
for consumer confusion of your trademark with existing trademarks. If
desired, and subject to budgetary considerations, the search can be extended
to cover various sources of information respecting unregistered trademarks,
such as telephone or trade directories, corporate/trade name registries,
etc.
Usually, we search databases which replicate both the records kept by the
Canadian Trademarks Office, and the records of corporate/trade names kept by
the various provincial and federal incorporation authorities. In some cases,
additional searching to better canvas unregistered trademarks may be
recommended.
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Trademark licensing
A trademark may be licensed if the trademark owner controls the character or
quality of the wares or services with which the licensee uses the trademark.
A presumption of appropriate licensing arises if the product packaging,
labelling or signage identifies the trademark owner and asserts that the
mark is used under license. But, if the trademark owner does not actually
control the licensee's use of the trademark, the trademark's distinctiveness
may be prejudiced, invalidating the mark.
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How is a trademark registered?
By filing a properly prepared trademark application in the Canadian
Trademarks Office. The Trademarks Act prescribes a variety of grounds for
trademark registration. It is important to ensure that your trademark
application recites the proper ground(s) for registration. Otherwise, the
resultant trademark registration may be invalid and unenforceable. (All too
often, problems of this sort are discovered when a valid registration is
needed urgently, namely when an infringement situation develops. Not only is
the desired protection unavailable, it may be too late to secure a valid
substitute registration.)
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Examination by the Competent Trademarks Office
After the application is filed in the Trademarks Office, it is examined by a
Trademarks Office examiner. For example, the examiner searches for
potentially confusing trademarks, and assesses other potential obstacles to
registration, as discussed above. If the examiner raises no objections the
application is approved for publication in the Trademarks Journal. For a
two-month interval after publication the application is subject to
opposition by other parties. Oppositions, which are relatively uncommon, may
for example be based upon prior use of an allegedly confusing trademark. It
typically takes up to a year to "prosecute" an application through the
foregoing stages, assuming that there are no examiner's objections or
oppositions.
Information required to prepare a trademark application
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The full name and postal address of the party in whose name the trademark is
to be registered (the "applicant"). If the applicant is a corporation,
please specify the jurisdiction of incorporation.
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Precisely what is the trademark that is to be registered? A single word; a
hyphenated word; a phrase; a design; a combination of word(s) plus design;
etc.? Once filed in the Trademarks Office, the trademark application
cannot be amended to change the trademark, so it is vital to give us precise
instructions at the outset.
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Is the applicant the original owner of the trademark, or are its rights in
the trademark derived from one or more predecessors? Please identify every
predecessor, explain how each predecessor used the trademark, and explain
how the applicant acquired the trademark rights from the predecessor(s).
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Has the applicant (or a licensee) actually used the trademark in Canada?
Please note:
Wares: a trademark is used on wares by selling the wares with the trademark
applied to the wares or to their packaging;
Services: a trademark is used in association with services by actual
provision of the services, coupled with a display of the trademark in
advertising for the services, or accompanying the provision of the services;
If such use has occurred, please also:
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specify the earliest date on which such use occurred on each type of wares
and/or services
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explain how and where the trademark was first used
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provide specimens of such use (i.e. labels as affixed to the wares at the
time of sale, or packages in which the wares are sold; or, for a service
mark, sample advertising material)
If such use has not occurred, please confirm that fact.
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If the trademark is or will be used by any entity other than or in addition
to the applicant (even a subsidiary or other closely related company),
please provide full particulars of such use and copies of all relevant
documentation, such as licence agreements, etc. pertaining thereto. It is in
the mutual interest of all parties involved with the trademark to ensure
that the trademark is properly licensed.
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A detailed list, in ordinary commercial terms, of the wares and/or services
to which the mark is (or is to be) applied. For example, the simple
designation "clothing" will not be accepted by the Trademarks Office because
it is too broad. A more specific listing of the clothing items involved
(i.e. shirts, dresses, etc.) is required.
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