R & S: Do you obtain any trademark protection in a name by
incorporating a company with that name (or filing a declaration of
partnership for a proprietorship)?
No. Incorporation doesn't protect the company's name and
it doesn't provide any trade-mark rights at all. At best,
incorporating a company will prevent competitors from incorporating
another company under the same name. However, it won't stop a
competitor from incorporating a company under a different name and
then carrying on business under the name of your company (e.g.,
123456 British Columbia Ltd. doing business as (Your
Company's Name) Entertainment).
R & S: What advantages do you obtain from trademark
Trade-mark registration is the only way to properly protect your
trade-mark. Registration gives you the exclusive right to use the
mark all across Canada and in other countries where you register
the mark. It also gives you a complete defence if a competitor
accuses you of infringing their trade-mark.
If you don't register your mark in Canada, you might be able
to claim common law trade-mark rights in the cities where your mark
has become well known (e.g. Vancouver); but this won't stop
competitors from using the mark in cities where your mark is not
well known (e.g. Toronto). Plus, the cost of drafting affidavits to
prove that your mark is well known in multiple cities will far
exceed the cost of registering the mark in Canada.
R & S: What is the typical cost involved in applying for a
The cost of drafting and filing one Canadian application is
$1000, including the government filing fees. Over the course of the
next year or two (assuming there are no objections or oppositions),
the additional prosecution and registration costs are approximately
$1500 (including the government registration fee), for a total of
approximately $2500 per mark. Other countries cost more, but you
can delay filing in foreign countries for up to 6 months, and your
foreign applications will still be backdated to the date of your
R & S: What should you consider when selecting a
It's important to pick a mark you can protect in the future.
For a mark to be protectable, it must be distinctive. A mark will
not be distinctive if it describes your products and services, or
if several other companies are already using similar marks.
After you've selected a mark, it's a good idea to do
searches to see if anyone else has rights in a similar mark. You
can do preliminary searches yourself online; however, these
searches can miss potential problems. If you want more comfort, you
should do comprehensive clearance searches which typically cost
around $1500 in Canada, including a legal opinion regarding whether
the mark is available for use.
R & S: If you choose a unique title for a film or
television series, can you prevent others from using that
Maybe. Film titles are regularly registered as trade-marks in
Canada. For example, most of the major studios have hundreds of
Canadian trade-mark applications and registrations in association
with films and TV series, including most recently MORTAL KOMBAT,
INCEPTION, HARRY POTTER, TRON, PHINEAS & FERB, etc.
However, the lower courts in Canada have said that the title of
literary works cannot function as registered trade-marks in Canada
because titles are descriptive. Until a higher court clarifies the
law, the safest approach is to apply to register your titles as
trade-marks, both in association with the film or the series, and
in association with related products and services, such as
merchandise. That way, there's a chance of maintaining the
registration for the related products and services even if the
registration in association with the film or series is ever
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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