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Advantages to registration
Frequently Asked Questions
Advantages to registration:
a Business edge!
It is exclusively yours
The registration of a trade-mark is a means to obtaining the exclusive right to use it in Canada in association with the defined wares or services.
Canada-wide protection
Once a trade-mark is registered, its owner can seek to curb infringement by taking action before the Federal Court of Canada, whose judgments are executory throughout the country.
Others will see you
If your trade-mark is registered, chances are it will appear in a pre-search done by a competitor. Registered trade-marks appear on all Canadian computerized data bases used for conducting trade-mark availability search. This is because registered trade-marks appear on most databases used by third parties wishing to “clear” their own marks before attempting to have them registered.
Own it with the ® symbol
He owner of a registered trade-mark is entitled to make use of the familiar symbol “®”. It constitutes a dissuasive notice to the public that the trade-mark is the registered property of its owner.
An advantage when others get examined
Any trade-mark that is filed for registration is automatically examined by the Trade-marks Office and compared with existing registered trade-marks (including yours). If your registered mark is located, the examiner will raise an objection against the newly applied for mark, preventing it from reaching registration.
Presume it’s yours
From an evidentiary point of view, a registered trade-mark is presumed valid and distinctive. This is an advantage against third parties wishing to attack its validity.
The 5 year rule of incontestability
After a period of 5 years, your registration can not be contested by someone who used it before you unless they can show you were aware of their earlier date of use.
Use of .ca
The registration of a trade-mark in Canada can serve to secure the trade-mark as a “.ca” domain name and favor the owner thereof under the dispute resolution policy.
FAQ
What is a trademark?
The most common trademarks are words or logos or both, which are used to differentiate goods or services of one business from those sold or offered by another.
Over time, trademarks can grow in value as they act as efficient identifiers of its owner. Once registered, a trademark has no predetermined lifespan, unlike other forms of intellectual property. Although registration lasts 15 years, it is renewable indefinitely. This is one of the reasons why a registered trademark can become a valuable asset.
Is a trademark different from a trade name?
It is, although the difference is sometimes subtle. We call a “trade name” that which is used as the name of your business. For example, if the name of your business is “ABC COMPUTER SERVICES INC.”, this is considered a trade name. However, you might want to use ABC alone on your invoices or in advertising as your service identifier in which case it would become a trademark. The same reasoning applies whether you manufacture or sell products.
Trademarks vs. Patents/Copyrights
Patents are a form of protection for inventions. As for Copyright, this is a form of protection for literary, artistic, dramatic or musical works (including computer programs) and other subject-matter known as performer's performances, sound recordings and communication signals.
Does my trademark have to be registered?
No. A trademark can exist and have rights even if it is not registered. However, the advantages of registration are such that it is clearly the way to go. see advantages here!
Are there limits to what I can register?
Yes. Because registration provides a form of “monopoly”, it is important that it not be used to unfairly restrict commerce. This would be the case if you wanted to register the word “apple” for apple pies. You can register any trademark that does not disobey the Trade-marks Act.
The kinds of marks that you may not register include the following:
Most common names and surnames
Marks that are “clearly descriptive”
Marks that are “deceptively misdescriptive”
Words that represent a geographical location
Words in other languages that are the name of the product or service
Marks that are confusing with a previously registered trademark or pending trademark
Names and surnames
A trademark may not be registered if it is nothing more than a name or surname (for example, John Smith, Pierre Tremblay, Chang, etc.).
An exception: The word “Rivers” may be a known name but it could also refer to the common word for waterways. It would therefore not be objectionable on this ground.
Clearly descriptive marks
Marks that clearly describe a feature of the goods or services are prohibited (i.e., a word that is clearly descriptive).
For example, the words "creamy" for yogurt, "fresh" for produce, and "program" for software developer services could not be registered as trademarks.
Deceptively misdescriptive marks
Marks that are misdescriptive in a deceptive way are also prohibited. Such would be the case for if your attempted to register the expression “pure cream” for frozen milk confectionary.
Geographical names
Are also prohibited, marks that refer to a geographical location known to be the place where the goods or services come from, or if they do not originate from said place. For example, you could not register "Swiss treats” as a trademark for fine chocolate regardless of the fact that they come from Switzerland or not.
Words in other languages
You may not register words that are the name of the goods or services in a foreign language such as: "gelato" (Italian for "ice cream"); "anorak" (Inuktitut for "parka"); or "wurst" (German for "sausage").
Marks confusing with a trademark already registered (or pending)
A registered mark benefits from a form of monopoly. It is therefore important to steer clear of adopting marks that are confusingly similar with existing registered trademarks. This is also true with respect to trademarks that are in the process of being registered.
Marks very similar to prohibited marks
You may not register a trademark that looks similar to certain “public ” marks unless you have the permission from the organization that controls it. These include, among others:
official government designs (e.g., the Canadian flag)
coats of arms of the Royal Family
badges and crests such as those of the Canadian Armed Forces and the letters RCMP
emblems and names of the Red Cross, the Red Crescent, and the United Nations
armorial bearings (coats of arms), flags and symbols of other countries
symbols of provinces, municipalities and public institutions
The same prohibition applies to marks that are obscene, scandalous or immoral. Also on this list are the portraits and signatures of living people or people who have died within the last 30 years.
How long does registration last?
Your registration lasts for 15 years from the date of registration. You may renew it every 15 years after that for a fee.
How much does registration cost?
Our fees are extremely competitive, and offer the maximum service. Call us for a free quotation!