Recognition

Updated quarterly, the loose-leaf manual Odutola on Canadian Trade-mark Practice...

Trade-marks

  1. What is a Trade-mark?
  2. Trade-mark vs company name or trade name – Night and day?
  3. Why Obtain a Canadian Trade-mark Registration?
  4. Doing Business Abroad – Exporting
  5. Protecting your Brand Equity – Standing Out in the Crowd
  6. Registering your trade-mark pays for itself
  7. Trade-mark Search – Avoid unpleasant surprises
  8. Trade-mark Expertise


What is a Trade-mark?

A trade-mark is:

  • a word, (coca-cola ®)
  • a symbol nike
  • a logo ebay
  • a design (Burberry pattern)
  • an internet address (ollip.com)
  • a phone number (Pizza Pizza’s 737-1111)
  • a shape/mode of wrapping coke ®
  • colour applied to a surface (UPS outfit)
  • a combination that distinguishes the goods and/or services of one person from that of another in the marketplace.

Whereas a trade name is the name by which a business identifies itself. This may also be a
corporate name such as OLLIP P.C.

A trade-mark is part of the umbrella of creative rights known as intellectual property, an asset which can be, for instance, used as a source of collateral to obtain financing.

A registered trade-mark is a government granted monopoly that gives you the exclusive right to use your trade-mark in association with certain goods or services for a period of 15 years (subject to renewal) throughout Canada. It also prevents others from importing or selling in Canada any goods or services bearing your trade-mark. A trade-mark registration in Canada does not extend to foreign countries. There is no universal or worldwide trade-mark. You must apply separately in and for other countries. Also, foreign trade-mark registrations do not protect a trade-mark in Canada.

As you can tell, we are talking about the power of brands which create instant recognition, customer loyalty and allow premium pricing.

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Trade-mark vs company name or trade name – Night and day?

Having only a trade or corporate name (either federally or provincially) does not necessarily mean that you own the name or are entitled to use it exclusively or prevent others from using confusingly similar names across Canada. In fact, rather than being an asset, a trade or corporate name by itself may represent a serious liability to your business.

In Canada trade-mark infringement occurs when the use of another word/symbol is likely to give the impression to the public that the goods or services of another party are those of the registered trade-mark owner. “Using a corporate name which is similar to a registered trade-mark may result in liability for infringement of the registered trade-mark even if the trade-mark was registered after the corporate name was granted. This is so because, under Canadian trade-mark law, the holder of a corporate name bears the responsibility of ensuring that no new trade-marks are registered which are confusing with that name.”

For instance, a Canadian federal corporate name will only prevent the registration of another similar federal corporate name; it does not prevent others from having a highly similar or exactly the same business name in any province or territory in Canada.

Equally, in any Canadian province or territory, two same business/corporate names may co-exist. Therefore, do not confuse a business or corporate name registration with a registered trade-mark.

Both federally and provincially, a business or corporate name does not give you the exclusive ownership of the name and does not prevent others from adopting or using the same or a similar name elsewhere in the province or in Canada.

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Why Obtain a Canadian Trade-mark Registration?

If you value your business, product or service name, you are probably making a serious business mistake if you are using it without a trade-mark registration. Every company, in Canada or that does business here, with a name, product name, service name, slogan or logo has one or more trade-marks.

A trade-mark is not just an identifier; it is also your seal of quality as seen by your customers. Therefore, if you have a business or corporate name, according to Industry Canada/Corporations Canada, “Registration of a trade-mark is the best way to obtain the exclusive right to use the trade-mark in all of Canada in association with the products and services for which the registration is obtained”. A certificate of registration is to a trade-mark what a deed is to a house.

Lastly, independent research has shown that ownership of registered intellectual property, such as the registration of a trade-mark, significantly increases the market value of a company. More about Trade-marks under Resources.

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Doing Business Abroad – Exporting

Whether you are a Canadian company looking to sell your products or services abroad or a foreign company seeking to do business in Canada, identifying and protecting your intellectual property rights, such as trade-mark rights, that are associated with your products or services will mean the difference between profits and losses. In addition, whether you are physically shipping across Canadian borders or transferring data via the web, wherever you have a competitive edge, there is someone or a business out there that is ready to imitate or “improve” your brand. By applying for a trade-mark registration, you are staking your claim in your target markets to safeguard your sales and reputation. Once you have applied for a trade-mark registration in Canada, you can, within six months of filing, obtain the same Canadian filing date in several other countries. This has the advantage of granting you priority over someone who may have filed before you in that same foreign country. More about Exporting and Trade-marks under Resources.

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Protecting your Brand Equity – Standing Out in the Crowd

The success of your product or service today depends on the degree to which it is distinctive from your competitors by use e.g., of a specific logo, brand, design, or technology. Protecting your creativity with a trade-mark registration from imitation by competitors is key. In addition to distinguishing and protecting, the objective of a trade-mark registration is to act as a business tool to enhance the value of your business. You can even reserve a trade-mark before you use it by applying to register it on a proposed use basis. Once your trade-mark is used and registered, after a five-year period it becomes incontestable under certain conditions. An application for a trade-mark registration gives the public notice of your ownership claim and once registered of your exclusive right to use it throughout Canada in connection with the goods/services listed in the registration. Also from an anti-counterfeit (knockoff) perspective, it gives you the ability to file your trade-mark registration with Canada Border Services Agency (Canada Customs) and prevent importation of infringing products into Canada.

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Registering your trade-mark pays for itself

Brand recognition attracts paying customers and increases market access. A registered trade-mark is an asset by itself that can be worth billions. Google®, Research in Motion (Blackberry)®, Yahoo® and The Body Shop® were unknown small businesses not so long ago. For instance, many family enterprises choose trade-mark registration as a means to safeguard the family name that has become widely associated with a product or service. A trade-mark registration protects your domain name and acts as a sword against copycats. In addition, if you want to franchise a business or license a product/service, it pays to have a government granted monopoly upon which you can rely. Franchisees or licensees pay trade-mark owners for the right to use the name etc… If any or part of your company’s success depends on brands or a name, without a proper intellectual property protection strategy, your company’s existence may be short-lived. More about Trade-marks under Resources.

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Trade-mark Search – Avoid unpleasant surprises

Before choosing a name, brand or applying for a trade-mark registration, a trade-mark search should be conducted. While this is optional, it alerts you of potentially confusing trade-marks and thus saves you the cost of additional fees including the costs of an opposition, of defending a trade-mark infringement suit, changing your name and stationery as well as having to inform your customers/suppliers that you are “re-branding”.

This oversight can be both expensive and embarrassing. A search should cover names which are similar to or the same as your proposed brand name or trade-mark.

A common misconception is that you can use a trade-mark, name or brand that is not identical but merely resembles a registered trade-mark. A proposed name or brand need not be identical to cause confusion in the minds of consumers, it is sufficient that the proposed trade-mark/name or brand, sound, look alike or suggest the same idea as the registered trade-mark. More Trade-marks under Resources.

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Trade-mark Expertise

In medicine, all doctors are technically qualified to help you. However, when you have a specific problem, you want and need to see a specialist. The same principle is applicable with Canadian trade-mark issues. You want and need to trust your most valuable assets to a Canadian trade-mark professional with the expertise and experience to efficiently provide you with solutions. More about us under Recognition.

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