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Trademark law in canada

Please keep in mind that this is not legal advice. The information provided herein is for educational purposes only. If you would like to get in touch with a Canada trademark lawyer to help you with your application or trademark dispute, then you are encouraged to seek a professional. In this article, I'll be discussing some of the basic questions about trademarks, including what exactly is a trademark, what is the Canadian trademarks database, do I have to register a trademark, and what are the advantages of registering a trademark. DefinitionA 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. There are three main kinds of Trademarks in Canada: 1. Ordinary Marks; 2. Certification Marks; and 3. Distinguishing Guise. These kinds of Trademarks will be discussed briefly in turn. Ordinary MarksThe Canada Trade-Marks Act defines an Ordinary Trademark as: "a mark that is used by a person for the purpose of distinguishing or so as to distinguish wares or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others," So a trademark is a word, symbol, picture, or combination of these things used to distinguish a product (called a "ware") or a service of one business from another that offers similar wares or services. Certification MarkA Certification Mark is defined as follows: "a mark that is used for the purpose of distinguishing or so as to distinguish wares or services that are of a defined standard with respect to (a) the character or quality of the wares or services, (b) the working conditions under which the wares have been produced or the services performed, (c) the class of persons by whom the wares have been produced or the services performed, or (d) the area within which the wares have been produced or the services performed, from wares or services that are not of that defined standard;" So a Certification Mark simply identifies products or services that meet a defined standard (e.g. wool mark). This kind of trademark can be licensed or used with permission by other companies to indicate certain standards. Distinguish GuiseA Distinguishing Guise is defined as follows: "(a) a shaping of wares or their containers, or (b) a mode of wrapping or packaging wares the appearance of which is used by a person for the purpose of distinguishing or so as to distinguish wares or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others;" So a Distinguishing Guise identifies the unique shape of a product or package (e.g. Coca-Cola bottle). Trade nameDon't confuse a trademark with a "trade name", which is simply a name a corporation registers to carry on business under that name. You'll often find corporations, perhaps numbered corporations like 123456 Ontario Inc. or 123457 Canada Ltd., carrying on business or c/o/b as "X" (here, "X" could mean "Pete's T-Shirt Shop"). You'll also find the term "operating as" being used. The idea behind the trade name is that a corporation may have a lousy corporate name and want to use a commercial name instead. These things being said, the trade name must be registered, does not afford the corporation protection as would a trademark and, on contracts between the corporation and third parties, the full corporate name must be identified (e.g. Pete's T-Shirt Shop c/o/b as 123456 Ontario Inc.). This is meant to protect the public so that they know exactly who they're dealing with - namely, a corporation instead of a sole proprietorship, partnership, joint venture, association, etc. Canadian Trademarks DatabaseThe Canadian Trademarks Database is the official database maintained by the Canadian Intellectual Property Office which presents regularly updated content about trademarks in Canada. The database is a very flexible tool that can be searched using various keywords and fields. The results display information concerning the applicant, the status of the application, the description of the wares and services and when they were first used, and the action taken by the government (and even third parties) concerning the trademark. Do I have to Register?You are not required to register a trademark in Canada. Many trademarks are established under common law (i.e. historical judge made law) on the basis that a party has been using the trademark for a long time. However, you should carefully understand and appreciate the advantages of doing so sooner rather than later, and the disadvantages of failing to do so. Advantages to Registering a TrademarkLet's be clear here. Simply registering a trademark doesn't automatically mean that you will be able to use it for your specific wares and services to the exclusion of everyone else in Canada. There may be situations where someone has been using an unregistered trademark longer than you have and, even if you have registered it, you may be required to stop using it because of the other party's common law rights (it depends on the circumstances of the particular matter). In any event, registration is proof of ownership. As such, registration acts as both a powerful shield and a sword against potential infringers. The primary advantage to registering a trademark is the direct evidentiary value that comes with registration. Registration is direct evidence that you have been using a trademark beginning from a certain period of time. Registration requires a comprehensive review, which adds to your trademark's authority. Hence, you will be able to point to registration in support of your use of the trademark through Canada for your particular wares and services for the duration of the registration period (i.e. 15 years). If infringers come around, then you'll be able to bring an action against them and use your registration as evidence to seek damages and prevent them from using their trademark. Disadvantages of Not Registering a TrademarkIt is highly advisable to register your trademark as soon as possible. Even if you don't register a trademark, you can still use it. The problem, however, may come when a party anywhere else in Canada with similar wares and services registers a trademark that is similar to the one you are using. The result may be that a judge may order you to stop using that similar or confusing Trademark on the basis that someone else registered it first (i.e. back to the evidentiary nature of registering a trademark). http://www.DynamicLawyers.com - Need a Lawyer? Make a Post (it's free and anonymous!). Get FREE Quotes!