1. A trade-mark is more than a brand name.
People generally associate trade-marks with consumer product brand names. Trade-marks are much more than brand names, however, any word, slogan, symbol, logo or design (or any combination of these elements) which identifies and distinguishes the products and services of your business from the products and services of others can be a trade-mark. An internet domain name, the distinctive form or shape of goods or their packaging, a colour applied to goods or even a distinctive sound can be a trade-mark. Virtually all businesses, regardless of the goods and services they sell, have trade-marks. Take a moment to think of all of the ways you identify your goods and services in the marketplace. You likely have more trade-marks than you think.
2. Registration of your business name does not protect your name as a trade-mark.
Registering your business or corporate name with the relevant provincial or federal authority does not protect your company name as a trade-mark. Registration of your business name also does not guarantee that you can use your name in the marketplace.
Your business name, whether it is the name of a sole proprietorship, partnership, the name of an incorporated business (a corporate name) or a trading style, is the name under which a you are registered to conduct business in a given jurisdiction. Provincial and federal legislation requires the registration of business or corporate names for information purposes. Registration of a corporate or business name may prevent others from registering your business name in the same jurisdiction. Registration of your business name is not a guarantee that you can use your name in the marketplace, however. Registration of a business name alone offers no protection against a prior user of a confusingly similar name who has used that name as a trade-mark. Registration of your business name alone will also not prevent third parties from using or registering the same or a similar name in other jurisdictions or as a trade-mark.
3. Only trade-mark registration provides the full protection available by law.
While it is not strictly necessary to register your company's trade-marks to have trade-mark rights, only trade-mark registration provides the full protection available by law. Without registration, your right to stop others from using your trade-mark in association with similar goods and services is generally limited to the geographic area in which you conduct business and your goods and services are known.
There are a number of advantages to securing registration of your company's trade-marks:
- Registration of a trade-mark gives the owner the exclusive right to use the mark throughout Canada in association with the goods and services in respect of which it is registered.
- Registration of a trade-mark facilitates enforcement of your mark. Enforcing rights in unregistered marks can be difficult and expensive.
- The presence of a trade-mark registration on the public record can serve to deter others from adopting or using a similar trade-mark. An application for registration of a trade-mark can be filed on the basis of "proposed use", effectively allowing a business to reserve the trade-mark before use of the mark has actually begun.
- Registered marks are more readily licensed and sold than unregistered marks.
- A trade-mark is registered by filing an application for registration in the Canadian Intellectual Property Office. An application may be refused registration if the mark contained in the application is clearly descriptive or deceptively misdescriptive of the designated goods or services, or if the mark is confusingly similar to another mark of record. If no third party opposes registration of the mark, or if any opposition is successfully overcome, the application will mature to registration. A trade-mark registration is valid for fifteen years and can be renewed for subsequent fifteen year terms upon payment of a renewal fee.
4. Conducting a search can save you valuable time and money.
While there is no requirement to conduct a search prior to filing an application for registration of a trade-mark, a search will assist you in determining whether someone else has applied for the same mark or a mark which may be considered confusingly similar. Conducting a search will also help trade-mark counsel to determine the ease and likelihood of obtaining registration of the mark. Taking these steps before an application is filed can often eliminate unnecessary expense and effort down the road. It is also advisable to consider the availability of the mark in foreign jurisdictions if you are considering using the mark outside Canada.
5. Proper use is essential to maintaining your rights.
Proper use of your trade-marks is essential for maintaining your trade-mark rights. The following are some suggested guidelines for proper trade-mark usage:
- Always distinguish a trade-mark from surrounding text by using distinctive lettering ( X-BRAND™ database software is my company's most profitable product)
- Do not use your company's trade-mark as the named goods or services themselves. A trade-mark should always be used as an adjective modifying the name of a product or service. ( "X-BRAND™ database software is the market leader" not "X-BRAND™ is the market leader.")
- Do not alter or vary your trade-mark. A trade-mark must be used in the form in which it is registered. Altering your mark can lead to a loss of rights. (X-BRAND™ not XBRAND™ )
- Properly mark your company's trade-marks with the ™ or ® designation and use proper ownership statements. The ™ designation can be used to indicate that you use the mark identified as a trade-mark. The registration symbol, ®, should only be used in association with registered trade-marks. It is important to be aware that in some jurisdictions, it is considered improper to use the ® symbol in association with a trade-mark if the mark is not registered in that jurisdiction. A proper ownership or attribution statement should also be used to indicate ownership of your company's trade-marks (as well the ownership of third-party trade-marks). (X-BRAND® is a registered trade-mark of Brand X Software Company Ltd.)
- Use your trade-marks. Failure to use your trade-marks in association the goods and services in respect of which they are registered will lead to a loss of rights.
- Licence your trade-marks properly. If anyone other than the registered owner of a trade-mark uses the mark, the owner should ensure that any such use is under the scope of a properly drafted licence agreement which contains adequate quality control provisions. Improper licencing can lead to a loss of rights.
- Police the marketplace. Failure to stop unauthorized use of your company's trade-marks in the marketplace can lead to a loss of rights.
6. Canadian registrations cover Canada only.
Registration of a trade-mark in Canada alone provides your company with protection of its trade-mark in Canada only. If your company sells goods and services outside Canada, you may wish to consider obtaining registration of your trade-mark in other jurisdictions in which you are doing business. In many circumstances, registration of your mark in Canada can make foreign registration easier. It is also important to note that in many jurisdictions, the first party to register a mark, not the first user of that mark, is the party entitled to registration.
7. You have more intellectual property than you realize.
Many companies are surprised to discover the amount of intellectual property they own and use in their day-to-day business. You may be as well. In addition to trade-marks which distinguish the origin your company's goods and services, your company may develop and use copyright-protected literature and software, patented or patentable technology and a broad range of confidential information such as formula and customer lists. The law provides protection for all of these important assets.
Copyright is a bundle of rights that protects written and other works including books, drawings and photographs. The rights comprising copyright include (amongst others) the sole right to produce or reproduce a work or any substantial part thereof, the right to publish a work and the right to transmit a work to the public by telecommunication. Your company may own the copyright in a variety of materials produced and used in its business including original product and promotional literature, plans, drawings and software. It is important to note, however, that your company may not, in fact, own the copyright in all the material used in its business. In many cases, the copyright in materials used by a company may be owned by others, including third parties or contractors who assisted in the development of materials. Care should be taken to determine the ownership of copyright in key company materials and assets.
A patent is a grant that allows the owner of an invention to exclude others from making, using, or selling the inventive product or process covered by the patent. Patents are granted for new, useful and inventive products, compositions, apparatus or processes (or improvements thereof) in return for the disclosure of the invention to the public. In Canada, the first person to file an application for a patent is the person entitled to obtain a patent for the invention. Timely filing of applications for patentable inventions is therefore critical. It is also important to note that public disclosure of an invention more than one year before an application is filed will generally make it impossible to obtain a valid patent in Canada or the United States. If your company is involved in the manufacture of innovative products, or has developed new methods of manufacture, it may be worth investigating whether you can obtain patent protection.
The law also provides protection for other forms of intellectual property including confidential information such as secret formulae and customer lists, industrial designs, (the shape, pattern, or ornamentation of industrial objects), the topographies of integrated circuits and new varieties of plants.
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.
