A trademark is a distinctive sign or symbol that identifies and distinguishes the goods or services of one party from those of others. This can include brand names, logos, slogans, and even sounds or scents associated with a particular product or service.
The law recognizes certain rights for trademarks that allow the trademark owner to protect and enforce those rights in the marketplace. The underlying rationale is to protect consumers so that they can have confidence in where and who is providing a certain good or service. As a mark becomes associated with an owner as a source of goods and services, that mark can become a valuable asset.
Unregistered vs Registered Marks: What’s the Difference?
The law recognizes 2 kinds of trademarks: registered and unregistered trademarks. Each has different features with respect to protection, rights, and enforcement.
| Unregistered Marks | Registered Marks | |
| Protection | · Limited to the geographic area in which it has become known and to the extent that the mark has become known through use.
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· Owner is entitled to exclusive use throughout Canada with respect to the specified goods and/or services with which it is registered.
· Protection extends to similar marks or marks that could be confusing with the registered trademark. |
| Rights | · Ownership and validity must be proved in court.
· Rights extend only over the geographic area in which the mark has become known to the public through use. · Rights extend only to the extent that “goodwill” or “secondary meaning” can be demonstrated.
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· Legal presumption of ownership and validity throughout Canada.
· Right to exclusive use throughout Canada in association with the registered goods and services. · Can use the ® symbol to indicate the mark is registered.
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| Enforcement | · More challenging than registered marks.
· Must prove prior use and reputation in the marketplace. · Can enforce only to the extent that rights can be demonstrated in court. |
· Can rely on presumptions and remedies under the Trademarks Act, which can make enforcement easier.
· Registration is strong evidence of ownership and validity throughout Canada. · Some third parties, such as Amazon, provide systems for registered trademark owners to self-remedy for counterfeits on their platforms. · Can work with Canadian Border Services Agency to stop counterfeit goods at the border. |
In addition to the above, a registered trademark can be a valuable business asset to a company that can be licenced, assigned, and used as security for financing.
How does Registration Work?
In Canada, trademark registration is not mandatory, but is necessary to get all of the advantages under the Trademarks Act. The Canadian Intellectual Property Office (“CIPO”) oversees the Trademarks Act, and registration involves the following steps:
- Search and Clearance: Before filing a trademark application, it's essential to conduct a thorough search to ensure that the proposed mark is available for use and registration. This helps avoid potential conflicts with existing trademarks. To qualify for trademark registration, a mark must be distinctive and not merely descriptive of the goods or services it represents. It cannot be confusingly similar to existing trademarks.
- Application Filing: Once you are satisfied that the mark meets the requirements for registration, the next step is to file a trademark application with CIPO. The application includes details about the mark, its owner, and the goods or services it will represent.
- Examination and Publication: CIPO will review the application to ensure compliance with the Trademarks Act and Regulations, and may request additional information or amendments. Once approved, the mark will be published in the Trademarks Journal for public review. The goal of the search and clearance step is to reduce the surprises at this stage.
- Opposition Period: After publication, third parties have an opportunity to oppose the registration of the mark if they believe it infringes on their rights. If no oppositions are filed, the mark will proceed to registration. The opposition period usually takes around 2 months.
CIPO is currently quite far behind on examining applications, so it can be 2-3 years before CIPO examines a new trademark application. Until registered, a trademark will still acquire unregistered trademark rights to the extent that it is used.
How are Trademarks Enforced?
Enforcing trademark rights is essential for protecting your brand and maintaining its integrity. In Canada, trademark infringement can take many forms, including unauthorized use of a confusingly similar mark, counterfeiting, and passing off.
There is no government body that will enforce your trademark, so it is necessary for a trademark owner to police its trademarks itself. Trademark owners can take legal action against infringers through civil litigation, seeking remedies such as injunctions, damages, and seizure of infringing goods. For registered owners, there are also self-help remedies and programs run by many e-commerce platforms and the Canada Border Services Agency to help police counterfeits.
Registered trademarks can also be easier to enforce when it comes to cyber-squatting, since domain name registries and registrars like CIRA and Verisign will recognize a trademark registration as having rights in a given name and its associated URL.
Conclusion
Trademark law plays a vital role in safeguarding the integrity and value of brands in Canada. By understanding the fundamentals of trademark registration, enforcement, and protection, businesses can effectively manage their intellectual property assets and mitigate the risk of infringement. Mark Evans and the trademark team at Lerners are here to provide expert guidance and legal support to help you navigate the complexities of trademark law and help you to protect your brand.
Contact us today to learn more about our trademark services and how we can assist you in safeguarding your intellectual property rights.
