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
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
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
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.
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
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
Is my trademark simply the name of the product or service in
another language (GELATO for ice cream)?
Is my trademark really just known to be a name or a
Is my trademark a purely functional aspect of the
Am I already aware of a similar trademark used in association
with similar products or services?
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.
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
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.
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.
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
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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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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