Canada: You Haven't Registered Your Trademark? Ten Things You (or Your Client) Should Know

Excellent branding is a critical part of your business. It allows you to distinguish your product and service from those of your competitors. Be it a word, a logo or a unique shape or design of a product or package, your trademark symbolizes your reputation and sets your business apart; when your customers see it, they know they need look no further. Selecting and registering a trademark can help you gain brand recognition, increase your sales and develop loyal customers and clients. Experienced trademark counsel can guide you at each step.

If you are using an unregistered trademark or are planning to file an application to register your trademark, consider the following:

Keep it Forever

If you register your trademark, you will have the exclusive right to use it for the registered products or services in Canada. You can renew this right indefinitely for a small fee.

Block Them Out

The Trade-mark Register is public. Simply having your trademark on the Register can deter others from adopting or using your mark or a similar mark or business name. Also, without any intervention on your part, the Trade-marks Office can rely on your trademark to block your competitor's subsequent application for the same or similar mark.

Go National

If you register your trademark, you have enhanced remedies to help you to stop others from using your mark or a similar mark anywhere in Canada. A mark that is not registered only provides rights on a local basis; policing and enforcing would be much more burdensome.

Be Choosy

Carefully select a distinctive mark. Not everything can be registered as a trademark. If you answer "yes" to any of the following, you may have a hard time registering your mark.

  1. Does my trademark describe the product or service (SWEET for ice cream), or would it deceive someone about the quality of the product or service (PURE COW for a soy beverage)?
  2. Does my trademark contain the name of a place that is commonly known to be the place of origin of the product or service (SEVILLE for oranges)?
  3. Is my trademark simply the name of the product or service in another language (GELATO for ice cream)?
  4. Is my trademark really just known to be a name or a surname?
  5. Is my trademark a purely functional aspect of the product?
  6. Am I already aware of a similar trademark used in association with similar products or services?

Snoop First

Before you apply for registration, have experienced counsel conduct a full search on your trademark. This is your best tool for determining the chances that your mark will be registered and for minimizing complaints from a prior user of a similar mark. You will be out of luck—and possibly liable to pay damages—if someone else has already used a mark that is similar enough to yours to confuse the public into thinking the two businesses are related.

Beware Authority

Look out for "s. 9 marks". These marks, owned by public authorities, appear on the Register, but are never actually registered. They are perpetual, not tied to any particular product or service, and trump the rights of all other subsequent users of the trademark.

It's Okay to Run Late if You are the First to Arrive

Have you selected a great trademark but not started using it in association with your product or service in Canada? Not a problem—you can file your application on the basis of an intention to use the trademark in Canada. Do you have a registration for the trademark in another country? If so, you can often register your trademark even if you have not used it yet in Canada. Just make sure you file your application before someone else does—remember to snoop first.

Copy That

Is your trademark a logo? Consider applying to register your copyright in the logo. Copyright can provide an additional layer of protection. A copyright registration will lighten your burden of proof if you ever get into a dispute.

Enter the Internet

The explosion of social media has expanded the ways in which you can advertise and promote your brand. Use your trademark as your domain name and as your Facebook and Twitter usernames. In each case, there is a dispute resolution policy in place to protect your trademark from misuse by others in these media—but only if your trademark is registered.

Go Abroad

Planning on selling your product or providing your service in connection with the trademark outside of Canada? Stake your claim and protect your brand. Register your trademark in the countries in which you plan to use it. Your trademark counsel has an international network of agents to help you navigate the process.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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