A Guide to Trade-marks: The Basics

• What is a trade-mark?
• Other forms of intellectual property
• Trade name vs. trade-mark
• Registered trade-mark vs. unregistered trade-mark
• Trade-mark agents
• Who can register a trade-mark?
• How do I register my trade-mark?
• How much does it cost?
• Five-step examination process
• How long does registration last?
• Foreign registration

What is a trade-mark?

A trade-mark is a word, a symbol, a design (or a combination of these features), used to distinguish the wares or services of one person or organization from those of others in the marketplace. Trade-marks come to represent not only actual wares and services, but the reputation of the producer. As such, they are considered valuable intellectual property. A registered trade-mark can be protected through legal proceedings from misuse and imitation.

There are three basic categories of trade-marks:

1. Ordinary marks are words or symbols (or a combination of these features), that distinguish the wares or services of a specific firm or individual. Suppose you opened a courier business which you called "Giddy-up." You could register the words as a trade-mark (assuming all legal requirements were met) for the service you offer.
2. Certification marks identify wares or services which meet a defined standard. They are owned by one person but licensed to others to identify wares or services which meet a defined standard. Examples are: the Woolmark design owned by Woolmark Americas, Ltd., for use on clothing and other wares and the logo of the Association of Professional Engineers.
3. Distinguishing guise identifies the shaping of wares or their containers, or is a mode of wrapping or packaging wares. If you manufactured candy moulded to look like butterflies, you might want to register the butterfly shape as a trade-mark under "distinguishing guise."

Other forms of intellectual property

People occasionally confuse trade-marks with copyright, industrial designs, patents and integrated circuit topographies. These are rights granted for intellectual creativity and are also forms of intellectual property. However:

• patents cover new inventions (process, machine, manufacture, composition of matter), or any new and useful improvement of an existing invention;
• copyrights provide protection for literary, artistic, dramatic or musical works (including computer progams), and three other subject-matter known as: performance, sound recording and communication signal;
• industrial designs are the visual features of shape, configuration, pattern or ornament (or any combination of these features), applied to a finished article of manufacture;
• integrated circuit topographies refer to the three-dimensional configuration of the electronic circuits embodied in integrated circuit products or layout designs.

Trade name vs. trade-mark

A trade name is the name under which you conduct your business, whether it be your own name, or the name of a corporation or a partnership or a name adopted for a segment of that business, i.e., a division of a company. The trade name can be registered under the Trade-marks Act only if it is also used as a trade-mark, that is, used to identify wares or services. For instance, let's say you own an ice cream business and your company is called A.B.C. Ltd.:

Example 1: People know your ice cream under the name A.B.C., because you use it as a trade-mark on or in association with your ice cream. You can, therefore, register A.B.C. as a trade-mark.

Example 2: People know your ice cream under the word you have promoted–for example, "Northpole." Even though the official name of your company is A.B.C. Ltd., no one associates it with your wares. Therefore, A.B.C. cannot be considered a trade-mark unless you begin to use it as one.

In certain circumstances, a trade-mark registration may be declared invalid because of the prior use in Canada of a trade name which is similar to the registered mark. Ideally, you should conduct a search of existing trade names before filing a trade-mark application. To do this, you can consult a variety of sources, including the NUANS (Newly Updated Automatic Name Search) database. A search of trade names or company names appearing in telephone directories from cities across Canada is also appropriate. To ensure a thorough search, it is best to hire a trade-mark agent to do the job.

Registered trade-mark vs. unregistered trade-mark

A registered trade-mark is one that is entered on the Trade-marks Register. You are not required to register your trade-mark–using a mark for a certain length of time can establish your ownership through Common Law–but it is highly recommended.

You must, however, apply for registration of a mark for precious metals. Your filing receipt is necessary if your goods must pass through customs.

Registration of your trade-mark gives you the exclusive right to use the mark across Canada for 15 years, renewable every 15 years thereafter. If you wish to apply for a trade-mark in other countries, you must apply to the country in which you seek registration.

Registration is prima facie evidence of your ownership. In a dispute, the registered owner does not have to prove ownership; the onus is on the challenger. Use of an unregistered trade-mark can lead to a lengthy, expensive legal dispute over who has the right to use it.

Keep in mind also that a registered trade-mark is a valuable asset for business expansion through licensing franchises. Note as well that if you fail to use the mark for an extended period, your registration may be cancelled.

Consider this scenario: For the past five years you've been operating a highly successful ice cream emporium under the word "Northpole" in your home town in Nova Scotia. You've never heard of another Northpole and you have never bothered with trade-mark registration. Meanwhile, an Ontario firm has registered the trade-mark "Northpole" to identify its growing chain of spaghetti diners and home brand tomato sauce. While conducting research for a Maritime expansion plan, the Ontario firm discovers your store and serves you with a lawsuit. Depending on the facts established with the Court, this may result in a court order preventing you from using the word "Northpole." This development couldn't come at a worse time, since you were just planning to expand your own business. The situation could have been avoided if you had solidified your clear rights to the trade-mark through registration.

Trade-mark agents

Preparing a trade-mark application and following through on it can be a complex task, particularly if a third party challenges your right to the mark. You may file on your own, but it is highly recommended that you hire a trade-mark agent to do so on your behalf.

In order to become a trade-mark agent, a Canadian resident must have worked in the field of trade-marks for at least 24 months, and have passed the qualifying examination.

A resident of Canada who is a barrister or solicitor, or a notary in the Province of Quebec, may become a trade-mark agent by passing the qualifying examination or working in the area of trade-mark law for at least 24 months.

An experienced, competent trade-mark agent who is well-briefed can save you problems caused by such obstacles as a poorly-prepared application or inadequate research. If you intend to register marks in other countries, the use of a trade-mark agent is strongly recommended.

You can find a list of trade-mark agents on CIPO's Web site. However, the Trade-marks Office cannot recommend any particular agent to you. Your local telephone directory is another source of agents' names.

Once you've appointed an agent, the Trade-marks Office will correspond with no one else about your application. You may, however, change agents at any time.

Who can register a trade-mark?

Companies, individuals, partnerships, trade unions and lawful associations may obtain registration of their marks of identification for wares or services, provided they meet the requirements of the Trade-marks Act and Regulations.

How do I register my trade-mark?

You can register a trade-mark electronically by filing an application for registration on-line with the Trade-marks Office in Gatineau, Quebec. Your application then goes through a stringent examination process to make sure that it meets all requirements of the Trade-marks Act. Keep in mind that in most instances your trade-mark must be used in Canada before it can be registered. While your application may be based on "proposed use," you must put your trade-mark into use before registration can occur.

In the following sections, we will outline the steps towards registration.

How much does it cost?

The basic federal government costs are:

• $250 (non-refundable) if submitted on-line or in any other case $300 for each trade-mark applied for;
  
• $200 for a certificate of registration, if your application is successful.

These costs do not take into account the fees of an agent, if you are using one.

Five-step examination process

When the Trade-marks Office receives your application, it does the following:

1. Searches the trade-marks records to find any other trade-mark that may come into conflict with the one you've submitted and, if one is found, informs you of it.
2. Examines the application for compliance with the requirements of the Trade-marks Act and Regulations and informs you of requirements which are not met by the application.
3. Publishes the application in the Trade-marks Journal, which is issued every Wednesday.
4. Allows time for opposition (challenges) to the application. Anyone may, upon payment of $750, file a statement of opposition with the Registrar. After considering the evidence filed by either or both parties, the Registrar decides whether to refuse your application or reject the opposition. The parties are notified of the decision and reasons why.
5. If no one files an opposition to your application, the mark is allowed. Upon payment of the $200 registration fee and the filing of a declaration of use in the case of a proposed use trade-mark application, your mark is registered.

How long does registration last?

Your registration is valid for 15 years, and you can renew the registration every 15 years thereafter upon payment of the $350 renewal fee (if submitted on-line or in any other case $400).

Note, however, that your registration may be the subject of a section 45 proceeding before the Trade-marks Office or an expungement proceeding before the Federal Court of Canada (see Expungement of a trade-mark registration in the Other Procedures section).

Foreign registration

Registering your trade-mark with the Trade-marks Office protects your rights in Canada only. If you are selling wares or services in other countries, you should consider registration in each of those countries. Contact a trade-mark agent or the embassy of the country in question for information on foreign registration.

A Guide to Trade-marks
| Table of Contents | Introduction | Making sure your Trade-mark can be Registered | The Trade-mark Registration Process | Other Procedures | For More Information | Fees | Appendix A - Twenty Common Questions About Trade-marks | Appendix B - Format of the Application | Appendix C - Your Trade-mark Application | Glossary |