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Frequently Asked Questions
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.
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.
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.
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.
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.
No, but it is
advisable.
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.
Companies, individuals, partnerships, trade unions or lawful associations, provided they
meet the requirements of the Trade-marks Act.
A registration is
valid for 15 years and is renewable every 15 years thereafter upon payment of a
fee.
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.
No. If your products
are sold in other countries, you should consider applying for foreign
registration. Contact a trade-mark agent or the embassy of the country in
question to find out about procedures.
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.
Normally, you may not
register a proper name—neither yours, nor anyone else’s—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.
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.
Trade-mark
registration usually involves:
- a preliminary search (done by you or your agent) of
existing trade-marks;
- an application;
- an 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).
It helps you
determine whether your application has a chance for success. It helps you avoid
infringing on other people’s trade-marks.
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.
- 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.
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.
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.
The answer to this question depends on your company's situation.
Corporations Canada publishes the Small
Business Guide to Federal Incorporation which can help you decide if you should
incorporate federally. You may also choose to incorporate at the provincial
level. Please consult the appropriate provincial government's Web site for
further details on provincial incorporation (links available on the Corporations
Canada Web site in the Other
related links section).
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