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Trade-marks
Industry Canada (IC)
Last Verified:
2006-10-16
Act: Trade-marks Act, R.S.C. 1985, c. T-13
Regulation: Trade-marks Regulations, 1996 (SOR/96-195)
To Whom Does This Apply?
Did you know that according to the International Trademark Association the average person sees or hears more than 1 500 trade-marks every day? In today's competitive global marketplace, branding often becomes the most important aspect of your business or organization.
You may have an excellent product or service but if you don't stand out in the crowd, customers will overlook you. A trade-mark distinguishes your wares (products) and/or services from those of your competitors, and helps to establish your identity in the marketplace. Operating under a trade name or corporate name is not the same as having a trade-mark.
Throughout the life cycle of the business, entrepreneurs should be aware of the nature, importance and value of their trade-marks. Significant business costs are associated with printing (products or services, stationary, business cards, promotional items etc), so it makes business sense that you have a good trade-mark before you begin.
A search of the Trade-marks Database will reveal names of existing marks so you can avoid conflicts and come up with a stronger mark for your business. Read on to make sure you are protecting your trade-mark adequately.
Summary
What is a Trade-mark?
A trade-mark is a word, a symbol, a design (or a combination of these elements) 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 also the reputation of the business. As such, they are considered valuable intellectual property (IP). A registered trade-mark can be protected through legal proceedings from misuse and imitation.
Trade-marks can be registered with the Canadian Intellectual Property Office (CIPO). No one is required to register a trade-mark unless it is used to mark precious metals. Anyone using a mark for a certain length of time can establish their ownership through Common Law, however registration is highly recommended.
Basic categories of trade-marks:
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Ordinary marks are words or symbols (or a combination of these elements) 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.
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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 I.W.S. Nominee Company Limited, for use on clothing and other wares and the logo of the Association of Professional Engineers.
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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."
Trade-mark vs trade name
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. Limited. 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. The What's in a Name pamphlet covers this topic.
In certain circumstances, a trade-mark registration may be declared invalid because of the prior use in Canada of a trade name that is similar to the registered mark. Ideally, a search of existing trade names should be conducted before filing a trade-mark application.
Trade-mark Protection
A trade-mark registration is valid throughout Canada for 15 years and is renewable every 15 years thereafter. Those selling wares or services in other countries should consider registration in each of those countries. Contact a trade-mark agent or the IP Office of that country.
Non use
If the owner does not use a trade-mark for an extended period, the registration may be cancelled under section 45 of the Trade-marks Act .
Not registerable
In general, marks that may not be registered are names of individuals, words that are clearly descriptive (e.g. "delicious" ice cream), terms that are deceptively misdescriptive, 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. The latter include symbols (coats of arms, badges, crests, etc.) of national and international organizations and terms that are considered immoral or offensive.
Why file?
Registration is direct (prima facie) evidence of ownership of a trade-mark that gives the owner the exclusive right to use the mark. A registered trade-mark is also a valuable asset for business expansion through licensing franchises and is a big part of attracting and retaining customers.
Use of an unregistered trade-mark can lead to a lengthy, expensive legal dispute over who has the right to use it. In a dispute, the registered owner does not have to prove ownership; the onus is on the challenger.
Benefit to Canadians
Canadians are surrounded by trade-marks used by businesses as branding for wares and services in Canada. Canadians are able to verify the registration and ownership of these trade-marks, providing them with information to make informed business decisions such as when purchasing a franchise or products or services.
Getting Started
First identify the intellectual property (IP) that should be protected and make sure it can be protected under the Trade-marks Act. The publication Stand out from your competitors provides a valuable introduction to IP and is a great starting point. The Guide to Trade-marks provides more general information and an introduction to trade-mark practices and procedures.
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Trade-marks Act Department of Justice Web page
Agents
A trade-mark application is a complex document and must be worded correctly to be of value. Registered trade-mark agents can help with the many complexities of trade-mark law. They must pass rigorous examinations in trade-mark law and practice before they may represent applicants. CIPO recommends the use of an agent and maintains an on-line list of registered trade-mark agents.
False Invoices
Make sure you know who you are dealing with before paying an invoice you were not expecting.
Preliminary search
Do a preliminary search of the Canadian Trade-marks Database to see if similar trade-marks exist. This will help in deciding if filing for trade-mark protection makes sense. The Trade-marks Database Tutorial is an e-learning tool which explains the importance of trade-marks information, outlines the content of the database and provides examples of effective searching techniques.
In addition NUANS (Newly Upgraded Automated Name Search) is a computerized search system that compares a proposed corporate name or trade-mark with databases of existing corporate bodies and trade-marks. This comparison determines the similarity that exists between the proposed name or mark and existing names in the database, and produces a listing of names that are found to be most similar. You may order your NUANS name search report from a NUANS Registered Search House.
A trade-mark agent or professional searcher can be hired to perform a more in-depth search.
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Obtain a NUANS report
Filing an application
Preparing a trade-mark application and following through on it can be a complex task. CIPO recommends the use of a registered trade-mark agent and maintains an online list of agents.
The trade-mark must be used in Canada before it can be registered. An application may be based on "proposed use," but the trade-mark must be put into use before registration can occur.
Applications may be filed online, by mail or by fax. There are online and printable forms and manuals on the site.
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Registered Trade-mark Agents List
Process and related fees
There are several steps in the process and these are detailed on the CIPO Web site with approximate turnaround times and associated fees.
Fees
Save $50 when filing an online application or renewing a registration. Refer to the Application Process document for the basic fees associated with an application.
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Trade-mark Regulations (1996) Department of Justice Web page
Assistance Available
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CIPO's Client Service Centre
Online Forms
File new and amended applications or renew the trade-mark and pay by credit card online. For individuals there is a log-in process through Strategis. For agents there is a second log in process through CIPO. Also there are system and browser requirements to be met including 128 bit encryption. For more information see the registration page.
Order copies of trade-mark documents online, pay when the order is ready.
Mail and Facsimile Correspondence
Licences and assignments must be sent by mail or fax as original signatures are required.
Address to: Registrar of Trade-marks, Canadian Intellectual Property Office, Place du Portage I, 50 Victoria Street, Gatineau, Quebec K1A OC9; or to a designated Industry Canada Regional Office; or via a designated courier service; or by fax to (819) 953-CIPO (953-2476) or (819) 953-OPIC (953-6742).
The date of receipt depends on where/how it was delivered and whether the office is open for business on that day.
Publications
The Trade-marks Journal is the official publication in which proposed marks are published every Wednesday. The online version is the official version. Notices, Examination/Wares and Services Manuals and other publications are available on the CIPO Web site.
DISCLAIMER
Information contained in this section is of a general nature only and is not intended to constitute advice for any specific fact situation. For particular questions, the users are invited to contact their lawyer. For additional information, see contact(s) listed below.
Quebec Contact(s):
Industry Canada
Suite 700
5 Place Ville-Marie
Montréal, Quebec
H3B 2G2
Telephone: 514-496-1797
Fax: 514-283-3096
National Contact(s):
Information Officers
Client Service Centre
Canadian Intellectual Property Office
C-229
Place du Portage 1
50 Victoria Street
Gatineau, Quebec K1A 0C9
Fax: 819-953-7620
Toll-free (information): 1-866-997-1936
TTY Toll-free (hearing impaired): 1-866-442-2476
E-mail: cipo.contact@ic.gc.ca
Web site: http://cipo.gc.ca