This basic information is for people new to trademarks
If you are a Canadian business owner or entrepreneur looking for information on Canadian trademarks, you should start here on this page (see below).
Contents
What is a trademark?
Why use a trademark?
Why register a trademark?
When to register a trademark in Canada – and when not to bother.
What is a trademark?
A trademark is a mark that distinguishes goods or services in the marketplace.
In Canada, a trademark is either a ‘wordmark’ composed of a word or words, or a ‘design mark’ which is composed of a design with or without words, or in a few rare cases, a ‘distinguishing guise’. More exotic forms of trademarks such as colours (by themselves), three dimensional marks, positions, holograms, motions, sounds, tastes, scents and textures are also registrable trademarks.
A trademark in Canada may be a name, logo, slogan, or design.
Why use a trademark?
Many of the principles of trademark law are, implicitly (but rarely expressly) correlated to the good branding and marketing principles. In particular, it is usually a good idea to ‘brand’ goods (or services) with a distinctive ‘mark’ which distinguishes the source of the goods/services. Consumers frequently choose which product/service to buy on the basis of reputation – and they correlate reputation with a name, logo, slogan, design or other mark.
What is a trademark application? In Canada, a trademark application is really a ‘request’ more than ‘a thing’, but the phrase “trademark application” has two common usages:
a) It is the actual document that you file with the Government of Canada to start the process towards registering a Canadian trademark, and
b) It refers to the corresponding application in progress.
What is a trademark registration? In Canada, a trademark can be registered or unregistered. A registered trademark in Canada is one that has been formally entered onto the official register of trademarks. Trademark registration in Canada is a matter of federal jurisdiction, governed by the Trade-Marks Act.
A trademark that has not yet been registered is often marked with (TM). Only a registered trademark can be marked with (R). More information can be found on this page on proper marking of trademarks in Canada.
A registered trademark really represents a ”bundle of property rights” that can be bought, sold, licensed, and pledged as collateral for loans.
A trademark registration in Canada comes at the end of a successful application process, when the trademark is entered by the Registrar on the Register of Trademarks. Thus an applicant files an application to register a Canadian trademark and some time later (usually 12-18 months) if the the application has been successful, the trademark is ‘registered’.
View the Canadian Trademark Process Flowchart in PDF here.
Why register a trademark?
No one is obliged to register a trademark in Canada. Registration of trademark is a key step in protecting and building value in your brand. The registration improves the rights of the owner of the trademark; creates an identifiable asset; provides some protection against claims of infringement or misuse by others; and, can be useful when dealing with other some other regulatory requirements (for instance, French language requirements for labelling in Quebec).
In Canada, the owner of an unregistered trademark has common law trademark rights (but these rights are quite limited). The owner of a registered trademark has much greater rights to the trademark (and to prevent others from using the trademark or confusingly similar trademarks) than the owner of an unregistered trademark.
Moreover, registration of a trademark provides some degree of protection for use of that trademark against claims of infringement from others. Accordingly, it is frequently highly advantageous to register a trademark. The more that you invest in marketing, and branding your products/services as different from those of your competitors, the more important it is to register your trademark(s).
What is the difference between a trademark and a trade name? In Canada, trademarks and trade names are quite different.
A trade name (or ‘business name’ or ‘corporate name’ depending on the context) is used to distinguish a business; a trademark is used to distinguish goods and services.
Registration of trade names is mandatory to meet the legal requirements for proper registration of businesses.
You are legally required to register a trade name in order to carry on business under a name other than your own in each province where you carry on business. For instance, if Jane Smith is the sole proprietor of a business known as “Joe’s Plumbing” in Toronto then Jane must register the trade name (“business name”) “Joe’s Plumbing” with the government of Ontario in order to carry on business under the “Joe’s Plumbing” name. Once she has completed this business name registration, Jane can, for instance, provide evidence of the business name registration to her bank so that she can accept cheques made out to “Joe’s Plumbing”. She can also contract with suppliers in the name of “Joe’s Plumbing” rather than having to use her name, Jane Smith.
Trademarks serve a very different purpose from trade names: they are all about distinctiveness in the marketplace. Trademarks help consumers identify the origin of goods and services, and trademarks help businesses preserve their distinctiveness in the marketplace.
Jane’s business name registration provides no protection against other people using either the identical name ‘Joe’s Plumbing’ if they don’t compete with her (even, for instance, if they are in the same province), or if they are using a confusingly similar name but are not in any way ‘passing themselves off’ as Jane. If Jane does not register her trademark, she may have some limited ‘common law trademark rights’, but if Jane really wants to try to prevent people from using Joe’s Plumbing or Joe’s Carpentry anywhere in Canada, she needs to try to register Joe’s Plumbing as a Canadian trademark.
When to register a trademark in Canada – and when not to bother.
As there is no legal requirement to register a trademark in Canada, every small business owner in Canada needs to ask themselves “should I bother to register a trademark, and if so, should I do it now or wait?”
Trademark registration costs time and money, so registration of a trademark in Canada is worthwhile if the value of the protection afforded by the registration is a reasonable return on the investment. Registration of a trademark can help create value in 2 different ways:
a) It provides a substantial level of comfort that the trademark you have chosen does not infringe the trademark rights of a third party, and thus that you will not be forced to change your trademark; and,
b) It provides substantial rights that you can enforce against third parties who might infringe on your trademark – whether direct competitors or not.
As a result, it is likely to be very worthwhile to register a trademark in Canada if:
– You intend to invest a substantial amount of money in packaging, signage, and the like;
– You intend to invest heavily in marketing the product or service;
– You intend to expand beyond one location;
– It would hurt your business if someone else adopted a similar or confusing name anywhere in Canada, whether they are a competitor or not;
– You intend to franchise or have other ‘partners’ also using the same name (for instance, if you have multiple ‘chapters’ of a charity); or,
– If it would cost a substantial amount in money or lost reputation to be forced to change your name later.
Similarly, it is not likely to be worthwhile registering a trademark if you carry on a small, personal business that is confined to one geographic area and that is closely associated with you (ie. Most sole proprietorships, and many small incorporated businesses). Generally, it is worthwhile to trademark a name on a product ‘sooner’ (ie. When the business is smaller) than for services. However, this rule of thumb is less applicable to internet-based services.
What is the deadline for filing a trademark? There is no deadline for filing a trademark. However, as your rights will be determined based on the date of your trademark application, it is important to file as soon as possible. Well managed companies usually file trademark applications based on ‘proposed use’ before they actually commence using the trademark in commerce. We recommend that you do the same if possible.
Who is a trademark agent? A registered trademark agent in Canada is an individual licensed by the Canadian Intellectual Property Office to represent trademark applicants. Only trademark agents may represent third parties before CIPO on trademark matters. While many trademark agents are also lawyers (attorneys), the two professions are quite distinct – most lawyers have little experience with trademark matters. Trademark lawyers represent trademark owners in court, in disputes, and in trademark transactions (licenses, buying/selling). There are roughly 2,000 trademark agents in Canada. Our firm is in among the top 100 firms in trademark filings.
Do you need a trademark agent? No, you do not “need” to hire a trademark agent to represent you before CIPO – you can act for yourself. But, bear in mind that you do not “need” to hire a dentist to help with your toothache either. Trademarks are complex, and the costs of making a mistake can be serious. We subscribe to the rule that ‘if it really matters, hire a professional to help, but on a reasonable (not unlimited) budget’.
Three types of trademarks. In Canada there are 3 types of trademarks:
-Ordinary marks.
-Certification marks.
-Official marks.
Most business trademarks are ordinary marks. Strictly speaking there is no such thing as a ‘service mark’ in Canada: trademarks may apply to either goods or services, although slightly different rules apply especially with respect to “use”.
Confusion. Two trademarks are confusing if use of both trademarks would lead to the inference that the goods or services used in association with the trademarks come from the same source. Detailed information on confusion in Canadian trademarks law can be found here. Similar sounding words for similar products are likely to be confusing; conversely, the exact same trademark can be used with very different products or services if it is unlikely to cause confusion as to the source. For instance, three different companies could own rights to GATOR as a trademark if, for instance, one sold a type of battery cables called GATOR, another sold clothing with GATOR on the label, and the third provided accounting services as GATOR Accounting.
Use. Use is a key concept in trademark law. In Canada, a trademark is used in association with goods if, at the time of any sale of the goods the trademark is clearly marked on the packaging of goods or a bill of lading that accompanies them. A trademark is used in association with services if, at any time when the services are advertised, the trademark is used in performance or advertising of the services. Information on proper marking of trademarks in use in Canada is provided here.
Association. Trademark rights are associated with goods or services from a specific source.
Use and Proposed Use. When an applicant files an application to a Canadian trademark, the applicant may:
a) Already be using the trademark in Canada; or
b) Propose to use the trademark in Canada at a later date.
A trademark cannot be registered until the trademark is used in Canada by the applicant. Accordingly, when a Canadian trademark application is filed on the basis of ‘proposed use’, ultimately (assuming all other hurdles to registration of the trademark are overcome in prosecution) before the trademark can be registered, the applicant must file a Declaration of Use. The date of first use in a Declaration of Use must be after the date that the application based on proposed use was filed (ie. An applicant cannot file based on proposed use, and then later claim use prior to the date of the application)
Fundamental requirements for registration. In order for an applicant to register a mark in Canada as a registered trademark:
a) The trademark must be registrable, and
b) The applicant must be the person entitled to register the trademark.
A Canada trademark application:
a) Will be assessed for compliance with these fundamental requirements by the Trademarks Examiner at the Canadian Intellectual Property Office during the prosecution phase and before the trademark may be registered, and,
b) Likely will be assessed for compliance with these fundamental requirements by the Trademarks Opposition Board if opposition proceedings are commenced by a third party before registration during the prosecution phase.
Examination. Every Canadian trademark application undergoes substantive examination: first as to whether the application is complete and in the proper form (“formalities”), and then once it is, it is given detailed review by a trademark examiner, employed by the Canadian Intellectual Property Office for whether this trademark can be registered at all in Canada, and if so, whether it can be registered by this applicant. As a result, virtually every Canadian trademark application will receive at least one Trademark Examiner’s Report and if the objects raised in this report are not overcome by the applicant, the application will be rejected.
Registrability and Entitlement. Two of the most important fundamental concepts in Canadian trademark law are “registrability” and “entitlement”.
Registrability. A trademark is not registrable in Canada if, at the date that the application is filed:
a) The trademark is deceptively misdescriptive;
b) The trademark is confusingly similar to another trademark used in Canada (or for which they have filed an applied for) previously by another person;
c) The trademark is primarily merely the name of a person living or deceased within the past 30 years.
Entitlement to register. The right to register a registrable trademark belongs to the first person to “use” the trademark in Canada, or, if no one has used it in Canada, the first person to file an application to register the trademark based on proposed use.
Opposition. A Canadian trademark application can be opposed by a third party after examination but before allowance. The Canadian trademark opposition process is complex and analogous to litigation. Learn more about the process of opposing a Canadian trademark application (and overcoming opposition) here.
Renewal. A Canadian trademark registration is valid for 15 years, and can be renewed upon payment of the renewal fee ($350 if paid online) for successive 15 year terms indefinitely. It is not necessary to file any evidence of use in order to renew a Canadian trademark registration, although of course the trademark registration can be cancelled for non-use in accordance with the usual rules.
Cancellation for Non-Use. A Canadian trademark registration may be cancelled if at any time that is 3 years after the date of registration, the owner has not used the trademark within the previous 5 years. Learn more about these administrative ‘cancellation for non-use’ proceedings here.
Cancellation for Improper Registration. A Canadian trademark may be cancelled (technically called “expunged”) if, at the time of registration, the trademark was not registrable or the applicant was not the person entitled to apply to register it. These ‘trademark expungement’ proceedings are conducted in Federal Court.
Enforcement and Infringement. In Canada, virtually all policing of trademarks is performed by the owners. Owners may sue ‘infringers’ for trademark infringement (as well as passing off, and other rights). Usually, infringment actions are commenced in provincial court. Owners must be vigilant to protect their marks. Owners who do not enforce their trademark rights risk losing them all through the doctrine of ‘dilution’.
Licenses. Trademarks are commonly licensed, to permit parties other than the owner to use the trademark in certain circumstances. Most franchise agreements, for instance, include a trademark license. It is extremely important the trademark owner retain some control over the use of the trademark by the licensee by imposing some standards. If not, then the trademark owner will lose trademark rights. This problem frequently affects the status of trademarks owned by one company and used by an ‘affiliate’, or ‘partner’ in Canada (or parts of Canada). If two or more entities use the same trademark, it is imperative that you spell out in writing clearly who owns the trademark and what rights the licensees do and do not have to use it. Licenses of Canadian trademarks can be filed with CIPO, but there is no requirement in Canada to file trademark licenses on the register.
Transfers (buying and selling) of trademarks. Canadian trademarks are a form of intellectual property that can be bought and sold (or more accurately, they are a bundle of rights which can be bought and sold), and pledged as collateral for loans. The agreement and purchase and sale is often accompanied by a stand-alone trademark “assignment”. The advantage of stand-alone assignments is that they constitute a clear, simple document (often referencing only a nominal price like $1.00) that can be filed on the public record easily and without risk of disclosing confidential information. Assignments of Canadian trademarks must be filed with CIPO to effect a proper change of ownership of the Canadian trademark. The assignment must be in writing, signed, and the signature of the assignor must be witnessed. Canadian trademark assignments do not need to be notarized, and do not have to be signed by the assignee.
