What is a trade mark?
A trade mark is a word, symbol or design, or a combination of these, used to distinguish the goods or services of one person or organization from those of others in the marketplace.
Are there different kinds of trade marks?
Yes, there are three basic types: Ordinary marks are words and/or symbols that distinguish the goods or services of a specific firm. Certification marks identify goods or services that meet a standard set by a governing organization. Distinguishing guise identifies the shaping of wares or their containers, or a mode of wrapping or packaging wares.
What is the difference between trade marks and other forms of intellectual property?
Trade marks are only one form of intellectual property that can be protected through federal legislation. The other forms are:
patents, for new technologies; copyrights, for literary, artistic, dramatic or musical works, performance, sound recording or communication signal; industrial designs, for the shape, pattern, or ornamentation applied to an industrially produced object; and integrated circuit topographies, for the three dimensional configuration of the electronic circuits embodied in integrated circuit products or layout designs.
What is the difference between a registered and an unregistered trade mark?
A registered trade mark has been approved and entered on the Trade mark Register held by the Trade marks Office. Registration is proof of ownership. An unregistered trade mark may also be recognized through Common Law as the property of the owner, depending on the circumstances.
Why register a trade mark?
Registration is direct (prima facie) evidence of exclusive ownership across Canada and helps ward off potential infringers. It enables you to more easily protect your rights should someone challenge them since the onus is on the challenger to prove rights in any dispute.
The process of registration, with its thorough checks for conflicting trade marks, will ensure that you are claiming a unique mark, and help you avoid infringement of other parties rights. A registered trade mark is a prerequisite for franchising a business.
Is registration mandatory?
No, but it is advisable.
Why hire a trade mark agent?
Trade mark registration can be a complex process; an experienced agent can save you time and money by avoiding pitfalls such as poorly prepared applications and incomplete research.
Who can register a trade mark?
Companies, individuals, partnerships, trade unions or lawful associations, provided they meet the requirements of the Trade marks Act.
How long is registration effective?
A registration is valid for 15 years and is renewable every 15 years thereafter upon payment of a fee.
How do I register a trade mark?
You must file an application with the Trade marks Office in Gatineau, Quebec. The application undergoes stringent examination to ensure it meets the requirements of the Trade marks Act.
Does registration in Canada protect my rights in other countries?
No. If your products are sold in other countries, you should consider applying for foreign registration.
What is the difference between a trade mark and a trade name?
A trade name is the name under which you conduct your business. It can be registered as a trade mark, but only if it is used as such, that is, used to identify wares or services.
May I register my own name as a trade mark?
Normally, you may not register a proper name”neither yours, nor anyone else ”as a trade mark. An exception may be made if you can demonstrate that the name has become identified in the public mind with certain wares or services.
What other kinds of marks may not be registered?
In general, the following marks may not be registered: words that are clearly descriptive (e.g. “delicious” ice cream), terms that are misleading, words that designate a place of origin (e.g. “Atlantic” cod), terms or symbols that are too similar to an existing trade mark, and terms and symbols that are expressly prohibited under the Trade marks Act.
These latter include symbols (coats of arms, badges, crests, etc.) of national and international organizations and terms that are considered immoral or offensive. Other types of marks that may not be registered are plant variety denominations and protected geographical indications for wines and spirits.
What are the steps of trade mark registration?
Trade mark registration usually involves:
- preliminary search (done by you or your agent) of existing trade marks;
- application;
- examination of your application by the Trade marks Office;
- publishing of the application in the Trade marks Journal;
- time for opposition (challenges) to the application; and
- allowance and registration (if there is no opposition).
Why is the preliminary search important?
It helps you determine whether your application has a chance for success. It helps you avoid infringing on other peoples trade marks.
Will the Trade marks Office tell me during my preliminary search if my trade mark can be registered?
No, the Office cannot provide a judgment at this stage. This can only happen during the examination process. Officials will give you general information about the rules and regulations.
What do I need to include in my application?
- the appropriate, completed application form;
- the application fee; and
- a drawing of the trade mark if application is made for a word or words in special form or a design.
May I allow other parties to use my registered trade mark?
Yes. You may sell, bequeath or otherwise transfer your rights to a trade mark through a process called assignment. You may also license rights to your trade mark.
Will the Trade marks Office ensure that my trade mark is not infringed?
The Trade marks Office does not act as an enforcement agency. You are responsible for monitoring the marketplace for cases of infringement and taking legal action, if necessary.
