It is not necessary to register in order to have valid trademark rights. Such rights derive from the old English Common Law, are hence the mark is often called a common-law or unregistered trademark. As soon as a valid trademark has been properly used, these common-law trademark rights arise, but they are very weak rights. If a common-law trademark is infringed, then you can sue in the Courts, but you have only weak rights. For example, you must prove that there is “good will” associated with your mark. Also, these rights only extend to the locale where you have this reputation, and not anywhere else.
Many people and businesses complained to the government about how difficult and expensive it was to protect their trademarks. As a result, Parliament enacted a Trade-marks Act. This Act set up a register of trademarks, where one can apply. If the necessary requirements were met, such as not being confusing with another mark, not too descriptive, etc., the mark will likely be put on the register. This entitles the owner to additional rights. In addition, everyone is expected to know about any mark that is on the register. Thus, even if someone uses the mark without knowing about your registered trademark, they are considered to be infringing.
Advantages of Registered Trademarks
Registration of a trademark has many advantages. Here are some of the more important ones:
- It reserves the right of exclusive use across Canada. Thus, you can prevent someone from using your trademark even if they are across the country and you are not using your trademark there currently.
- Since the registry is a public record, it is assumed that everyone has knowledge of its contents. Thus, if someone adopts the same or a confusingly similar trademark, they are assumed to have done so with knowledge of your mark. They can then be stopped from using your mark and/or sued for infringement.
- Once you have registered your trademark, the Trademarks Office should refuse any other applications for registration of similar marks that might be confusing with yours. If the Office is in doubt, they are to send you notice of the pending application, so you can decide whether to oppose it.
- If your mark is registered under the Trade-marks Act, then you can use the Trade-marks Act action for infringement. This is a much quicker, broader and less expensive route than the common-law action for infringement.
- It is assumed that your trademark already has “goodwill”, so you do not have to prove it in court.
- It is much more difficult for anyone to challenge the validity of your trademark, particularly after five(5) years of being registered.
- It is easier to license someone else to use your trademark.
- A registered trademark can add considerably to the value of your business, especially if you are selling it or trying to get new investors. A registered trademark ‘solidifies’ the goodwill of the business into a far stronger asset that can be protected, expanded and even sold separately.
Protecting Your Corporate Name
This page contains the verbatim text from the notice “Protecting Your Corporate Name” which is provided by Industry Canada to federal incorporations when they are registered.
The granting of a corporate name by the Director under the Canada Business Corporations Act (“CBCA”) generally confers a degree of protection for that corporate name. However, the granting of names under the CBCA does not in itself confer any rights to those names vis-à-vis corporate names or trade names which may have existed at the time of granting but which did not appear on the NUANS search report or which the Director did not, at the time of granting, consider likely to cause confusion. Similarly, the granting of a corporate name may not protect you from earlier or subsequent trade-marks of other parties.
The following gives a succinct overview of the relationship between trade name, corporate name and trade-mark rights and some general guidance as to how you can best protect your corporate name and the goodwill associated with it.
Before an applicant applies for a corporate name, it is important for him or her to ensure that there are no similar existing corporate names, trade names or trade-marks. A NUANS search report, including trade-marks which are registered or proposed for registration, is required to be filed with articles of incorporation, amendment, etc. and is usually very reliable. Since, however, the NUANS system is not fool-proof, the applicant remains responsible for any likelihood of confusion.
While a name granted by the Director will appear on future NUANS searches required for incorporation in the federal and most provincial jurisdictions, you may wish to conduct your own NUANS searches on a periodic basis after your name has been approved. This would be done in order to ensure, to your own satisfaction, that no confusing corporate or business name has subsequently been approved in the jurisdiction(s) in which you are carrying on business, and to give you up to date information about trade-marks that have been applied for or registered subsequent to the granting of your corporate name.
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 trade-marks 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. Information on registered and advertised trade-marks can be obtained from the Trade-Marks Journal distributed by the Canadian Intellectual Property Office or by conducting a search of one of the various electronic trade-mark databases. The holder of a corporate name has the right, in certain circumstances, to oppose the registration of a trademark or to have a trade-mark registration expunged.
Registration of a trade-mark is the best way to obtain the exclusive right to use the mark in all of Canada in association with the products and services for which the registration is obtained. While the Trade-Marks Office can provide basic guidance, it is recommended that a specialist (a trade-mark agent or trade-mark lawyer) be consulted. It should be noted that trade-mark registration is not available for corporate names in all circumstances.