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 protection?
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 trade-mark?
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 Canadian application.
R & S: What should you consider when selecting a trade-mark?
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 title?
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 attacked.
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.