What is a trademark? A trade mark is a combination of letters, words, sounds or symbols that identify and distinguish the goods and services of one company from those of another. Trademarks are valuable intellectual property assets because they reflect your company's identity and are an effective way to build your reputation and gain recognition. A good trademark also increases your chances of standing out from your competitors.
In order to understand the legal issues involved in registering a trade-mark, it is important not to confuse a trade-mark with a trade name. A trade name is the name under which a business operates. However, it can be used as a trade-mark if it identifies the products or services offered by a business.
It is possible to register a trade-mark with the Canadian Intellectual Property Office (CIPO), subject to the provisions of the Trade-marks Act. It is true that, over time, rights of use may be acquired in respect of a trade-mark without the need for registration. However, these acquired rights have a limited scope. Indeed, the owner of a registered trade-mark enjoys increased protection. Here are some of the advantages of registering a trade-mark.
A holder of a registered trade-mark has an exclusive legal right to it throughout Canada. This means that your registered trade-mark will be protected in all provinces of Canada, regardless of where you operate. You will be able to prevent a business in another province from using it. On the other hand, if your trade-mark is not registered, your protection will be limited to the geographical areas where you use it.
Registering a trade-mark in Canada makes it easier to obtain a registration abroad. For example, if you wish to register in one of the member countries of the Paris Union, your application will be given priority. In addition, since Canada's accession to the Madrid Protocol, registered trade-mark owners can obtain protection in over 100 countries through a single application to the World Intellectual Property Organization (WIPO). Registration of a trade-mark in Canada is therefore a prerequisite for this international protection.
Registration of a trade-mark in Canada opens the door to a number of legal remedies, including an action for infringement. Damages may also be awarded for any harm suffered by the owner of a registered trade-mark. The registration of a trade-mark may even serve as a defence against a third party who challenges its validity or use. As the owner of a registered trade-mark, you therefore benefit from better legal protection and a reduced burden of proof. Indeed, the registration of a trade-mark confers on you a legal presumption of exclusive ownership of the trade-mark. It will certainly be easier and less costly for you to bring a legal claim. On the other hand, the owner of an unregistered trade mark who wishes to enforce his trade mark rights can only do so in a passing-off action.
Registration is an obstacle to third parties wishing to use or even register a trade-mark that is identical or similar to yours. Indeed, CIPO is responsible for refusing any application for registration of a trade-mark if it is identical to another trade-mark associated with identical goods and services. Once your trade-mark is registered, it appears on a public register, so the registration of your trade-mark acts as a deterrent to third parties acting in bad faith to infringe your trade-mark rights. There is also an additional protection mechanism for registered trade-mark owners: they can submit a third party rights notice to CIPO to pre-empt and denounce a trade-mark application that has not yet been approved if it is confusing with their own registered trade-mark.
With the collaboration of Yousra B., student.