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Frequently Asked Questions
What is a trademark? What is a trade name?
How are trademark rights created? Who wins if two parties choose similar marks?
May I "reserve" a trademark before I'm ready to use it? What are the advantages of a trademark registration?
When should I apply to register a trademark? How is a trademark registered?
Trademark licensing Trademark registrability searches
Examination by the Competent Trademarks Office Information required to prepare a trademark application

 

What is a trademark?

A trademark is a word, logo, symbol, design, or a combination thereof, displayed on wares or associated with services, to identify the wares or services to purchasers. The trademark generally indicates that the wares or services come from, or are approved or sponsored by, the same source as all other wares or services associated with the same trademark. A trademark may also indicate that the wares or services meet the same standard of quality as all other wares or services associated with the same trademark. 
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What is a trade name?

A trade name is a name under which a particular business is carried on by an individual, partnership or company. It may be the corporate name of the company carrying on the business. A trade name displayed on wares or associated with services, may also function as a trademark.
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How are trademark rights created?

In Canada, trademark rights are created by actual "use" of the trademark on wares or in association with services. Sale of wares in packages bearing the trademark or provision of services described in advertising which displays the trademark are examples of trademark "use." In some countries, trademark rights are created solely by registration, even if the mark is not actually used.
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Who wins if two parties choose similar marks?

In general, the party who first uses the trademark in respect of certain wares or services, anywhere in Canada, is entitled to register the mark and obtain exclusive rights to use it with those wares or services.
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May I "reserve" a trademark before I'm ready to use it?

Yes, assuming that no one else is using the same or a similar trademark. In such a case, you may apply to register the trademark on the basis of an intent to use it (also called "proposed use") at some unspecified future date. You will then have priority in the trademark, even if someone else subsequently attempts to use it before you are ready to do so.
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What are the advantages of a trademark registration?
 
  • A registered mark can be enforced throughout Canada, regardless of whether it is being used or enjoys goodwill in any particular area. An unregistered mark can be enforced only in those areas where it has been used sufficiently extensively to establish goodwill;
  • Many parties search the Trademarks Register as an aid to selecting new trademarks. If your mark is registered, competitors who conduct such searches are much less likely to unwittingly choose a mark that conflicts with yours, thus nipping potential infringement disputes in the bud;
  • The Trademarks Office itself often refuses applications to register trademarks which are likely to be confused with previously registered trademarks. This can also curtail problems, if your trademark is registered;
  • The owner of a registered trademark may initiate infringement proceedings in either the provincial or federal courts. The owner of an unregistered trademark may not initiate trademark infringement proceedings, but must rely on "passing off" proceedings, which subject a plaintiff to a more onerous burden of proof;
  • After a trademark has been registered for five years it cannot be challenged on the basis that another party used it first (unless the owner of the registered trademark knew of the other party's use before adopting the trademark). This "incontestability" provision can be quite valuable, since one can never be absolutely sure what unregistered trademarks might be in use somewhere in Canada;
  • .A Canadian trademark registration can be used to claim priority in registering the trademark in foreign countries, but foreign registration may not be possible if the mark is unregistered in Canada.

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When should I apply to register a trademark?

As soon as possible. Subject to the results of a registrability search, a trademark application should be filed promptly, especially if the application is to be based on "intent" to use the trademark in Canada. Such applications have priority as of the date on which they are filed in the Trademarks Office. If there is a concern that another party may file a conflicting application, it may even be advisable to accept the risk of filing an application without waiting even one day for the results of a registrability search. Even if the application is able to assert the benefit of several years' use of the trademark important benefits can be gained by filing promptly.

Trademark registrability searches

Before you apply to register your trademark, it is advisable to conduct a registrability search. As a minimum, the search should cover the records of registered trademarks and pending trademark applications maintained by the Canadian Trademarks Office. The search objective is to assess the potential for consumer confusion of your trademark with existing trademarks. If desired, and subject to budgetary considerations, the search can be extended to cover various sources of information respecting unregistered trademarks, such as telephone or trade directories, corporate/trade name registries, etc.

Usually, we search databases which replicate both the records kept by the Canadian Trademarks Office, and the records of corporate/trade names kept by the various provincial and federal incorporation authorities. In some cases, additional searching to better canvas unregistered trademarks may be recommended.
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Trademark licensing

A trademark may be licensed if the trademark owner controls the character or quality of the wares or services with which the licensee uses the trademark. A presumption of appropriate licensing arises if the product packaging, labelling or signage identifies the trademark owner and asserts that the mark is used under license. But, if the trademark owner does not actually control the licensee's use of the trademark, the trademark's distinctiveness may be prejudiced, invalidating the mark.
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How is a trademark registered?

By filing a properly prepared trademark application in the Canadian Trademarks Office. The Trademarks Act prescribes a variety of grounds for trademark registration. It is important to ensure that your trademark application recites the proper ground(s) for registration. Otherwise, the resultant trademark registration may be invalid and unenforceable. (All too often, problems of this sort are discovered when a valid registration is needed urgently, namely when an infringement situation develops. Not only is the desired protection unavailable, it may be too late to secure a valid substitute registration.)
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Examination by the Competent Trademarks Office

After the application is filed in the Trademarks Office, it is examined by a Trademarks Office examiner. For example, the examiner searches for potentially confusing trademarks, and assesses other potential obstacles to registration, as discussed above. If the examiner raises no objections the application is approved for publication in the Trademarks Journal. For a two-month interval after publication the application is subject to opposition by other parties. Oppositions, which are relatively uncommon, may for example be based upon prior use of an allegedly confusing trademark. It typically takes up to a year to "prosecute" an application through the foregoing stages, assuming that there are no examiner's objections or oppositions.

Information required to prepare a trademark application

  • The full name and postal address of the party in whose name the trademark is to be registered (the "applicant"). If the applicant is a corporation, please specify the jurisdiction of incorporation;
  • Precisely what is the trademark that is to be registered? A single word; a hyphenated word; a phrase; a design; a combination of word(s) plus design; etc.? Once filed in the Trademarks Office, the trademark application cannot be amended to change the trademark, so it is vital to give us precise instructions at the outset;
  • Is the applicant the original owner of the trademark, or are its rights in the trademark derived from one or more predecessors? Please identify every predecessor, explain how each predecessor used the trademark, and explain how the applicant acquired the trademark rights from the predecessor(s);
  • Is the applicant the original owner of the trademark, or are its rights in the trademark derived from one or more predecessors? Please identify every predecessor, explain how each predecessor used the trademark, and explain how the applicant acquired the trademark rights from the predecessor(s);
  • Has the applicant (or a licensee) actually used the trademark in Canada? Please note:

Wares: a trademark is used on wares by selling the wares with the trademark applied to the wares or to their packaging;

Services: a trademark is used in association with services by actual provision of the services, coupled with a display of the trademark in advertising for the services, or accompanying the provision of the services;

If such use has occurred, please also:

  • specify the earliest date on which such use occurred on each type of wares and/or services;
  • explain how and where the trademark was first used;
  • provide specimens of such use (i.e. labels as affixed to the wares at the time of sale, or packages in which the wares are sold; or, for a service mark, sample advertising material);.

If such use has not occurred, please confirm that fact.

  • If the trademark is or will be used by any entity other than or in addition to the applicant (even a subsidiary or other closely related company), please provide full particulars of such use and copies of all relevant documentation, such as licence agreements, etc. pertaining thereto. It is in the mutual interest of all parties involved with the trademark to ensure that the trademark is properly licensed;
  • A detailed list, in ordinary commercial terms, of the wares and/or services to which the mark is (or is to be) applied. For example, the simple designation "clothing" will not be accepted by the Trademarks Office because it is too broad. A more specific listing of the clothing items involved (i.e. shirts, dresses, etc.) is required.

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