A brand owner must understand how the Canadian trademark system works so that it can be used to the maximum extent possible to protect the brand name and related slogans, the product and in some cases, product packaging. The potential benefits of the Trademarks Act needs to be carefully considered and implemented in a proactive fashion. Common law trademark rights may be helpful on a case-by-case basis.

The protection of trademarks is territorial when a brand name is used in other countries' separate coordinated protection measures must be implemented in each country.

The Benefits of Owning a Trademark Registration

The Act facilitates the protection of trademarks by providing for public notice of rights and granting exclusive rights to owners. There are a number of benefits associated with obtaining a registration which includes:

  1. A trademark registration is evidence of the exclusive rights granted under the Act and of the validity of the registered mark.
  2. The registration of a trademark confers exclusive rights to the use of the trademark throughout Canada, even though the owner may only be using the mark in a specific area of the country. Such rights may not be available to the owner of a common law trademark.
  3. A registration provides a barrier to registration by others of confusing trademarks and is referenced on a searchable register.
  4. As an application may be filed on the basis of the proposed use, the system in the effect allows a brand owner to reserve rights in a trademark which has not been used.
  5. A registration carries the right to apply for a corresponding registration in other countries that adhere to the Convention of the Union of Paris. The Convention provides for a priority system implemented by national legislation, under which an applicant can rely on its earliest filing date in one country as its filing date in another so long as the application is filed within six months of the applicant's initial filing.
  6. A trademark owner to may file an application under the Madrid Protocol to obtain protection in Canada and in other countries designated by the applicant, that adhere to the Protocol.
  7. After five years, a Canadian registration becomes incontestable against attack on the grounds of previous use or making known unless it is established that the person who adopted the mark did so with knowledge of that previous use or making known.
  8. The Act facilitates the transfer and licensing of trademarks.
  9. Registration makes available two statutory causes of action which are not available to common law trademark owners: that is, the right to bring proceedings for trademark infringement and depreciation of the value of the goodwill attached to a registered trademark.
  10. Obtaining a registration will assist the owner in using the Trademarks Opposition Board as a forum for challenging trademark applications of others.
  11. The owner of a registered trademark may bring proceedings in the Federal Court of Canada, which has jurisdiction to grant injunctions with nationwide effect.
  12. Frequently, ownership of a registered trademark is required to take advantage of
  13. take down procedures on the Internet and helpful in domain name dispute procedures.

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.