Canada: Is The Mark Used As A Trademark Or A Trade Name?

Last Updated: September 11 2015
Article by Richard Stobbe

Apple Inc. sells Apple-branded computers. Is Apple a trademark or a trade name? And what's the difference anyway? And perhaps most importantly, why should you even care?

A trademark is a protectable brand that distinguishes the source of goods or services in the marketplace. A trade name is merely a business name that may or may not overlap with a company's trademark rights. It could be a trading name, doing-business-as, or operating-as, such as 1234567 Alberta Ltd. doing business as ABC Trading, where ABC Trading is the trade name. In the case of Apple, the company name "Apple Inc." mirrors the company's core mark (no pun intended). If we think back to earlier times, the trade name "Research in Motion" was used by a certain business whose main product was sold under a different trademark: BLACKBERRY.

If you are a trademark owner, this kind of thing matters because of the requirement in Canada to continually use a trademark in order to maintain trademark rights. This means that a registered trademark is vulnerable to be cancelled if it falls out of use. There is a mechanism in the Trademarks Act to challenge an owner's entitlement to a registered mark, where the owner must show evidence of use. This is a challenge under Section 45 (and is commonly verbed in Canada, as in "we section fortyfived that mark").

In the recent decision by the Trademarks Opposition Board in Borden Ladner Gervais LLP v GDC Communities, 2015 TMOB 50 (CanLII), this issue was addressed. Someone challenged the registered mark GDC COMMUNITIES which was registered in association with various services of engineering, development, financing and management of real estate, real estate marketing and residential home construction. The mark owner responded with evidence showing use of the mark:

  • Some of the evidence showed use of the mark in a trade show outside of Canada, which would not qualify as use in Canada;
  • Some of the evidence was in the form of a business card which, according to the owner, was distributed to potential clients in Canada;
  • Some of the evidence showed use of the GDC COMMUNITIES on the owner's website;
  • Lastly, the owner tendered email correspondence evidence, showing the display of GDC COMMUNITIES.

The evidence was unconvincing because the decision-maker concluded that wherever the mark appeared, it functioned as a trade name (the name of the company), as opposed to a brand. The decision puts it this way: "GDC COMMUNITIES is not set apart from the surrounding text, but appears in the same size and font. In addition, the copyright notice at the bottom of the web page lists the copyright owner as GDC COMMUNITIES, immediately followed by the Registrant's address, suggesting that GDC COMMUNITIES is being used to identify the legal entity that owns the copyright and is not being used as a trade-mark. This is consistent with how GDC COMMUNITIES is used in the rest of the web page. In all cases in which GDC COMMUNITIES appears in the Registrant's evidence, it is not presented in a manner which sets it apart from other corporate information or in a manner such that it would be perceived by a consumer as a trade-mark." (Emphasis added).

The lessons for business?

  • The mark must appear in marketing materials - such as packaging, website materials, email footers, signage - in a way that sets the mark apart from the surrounding text. It is not necessarily fatal to a mark that it appears above the company's address. For example, an email or webpage showing "Apple, 1 Infinite Loop, Cupertino, CA" will not, by itself, jeopardize the strength of that mark. However, if that is the only use, it will lead to the conclusion that the mark is used merely as a corporate or trade name.
  • The mark should appear in a different font, in bold, in a different size or colour, and the proper notation should be used. In this case, the mark was a registered mark and should be accompanied by the circle-R mark.
  • Note: It is important that a mark is used as registered. Where the mark changes over time, the mark owner should consider filing a new application for the modified form of the mark. Otherwise, the evidence of usage may show use of the modified mark, which may not be accepted as evidence of use of the mark as it was registered.

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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