Tip 1

Determine your trade-marks

In Canada, a trade-mark can be a single word, a group of words, a group of numbers, a slogan, a logo, or any combination thereof. Non-traditional trade-marks, such as holograms and colours, can also be protected. A trade-mark extends to certification marks and distinguishing guises. Ultimately, a trade-mark must be visual to be protected in Canada.

Tip 2

Register your trade-mark

Canada operates under a dual trade-mark system: common law v. statutory trade-mark rights. Under Canadian trade-mark law, you are not required to register a trade-mark. However, there are definite advantages to registering under the Canadian Trademarks Act (the “Act”). A trade-mark registration:

• is prima facie evidence that you own the trade-mark;
• garners Canada-wide protection;
• grants the trade-mark owner the exclusive use of the trade-mark throughout Canada in respect of the wares and services;
• has unlimited renewable 15 year registration periods; and
• is a springboard for international protection.

A common law trade-mark on the other hand, has more limited geographical protection. In the event of a trade-mark dispute, as a common law trade-mark owner, a company must prove its rights to the trade-mark and also the scope of protection garnered by the trade-mark.

Tip 3

Can anything be registered as a trade-mark?

No. The Act contains some restrictions. The following are examples of what cannot be registered as a trade-mark in Canada:

• a word that is primarily merely a name or surname
• the name of the wares or services in any language
• a trade-mark that is confusing with a registered trade-mark

Tip 4

Keeping your trade-mark rights

Canada is a “use-it-or-lose-it” jurisdiction. A trade-mark registration is valid for 15 year unlimited renewable periods. However, if your company stops using the trade-mark, its rights to the trade-mark could cease and the trade-mark registration could become invalidated. “Use” of a trade-mark is a technical term within the Act. Thus, your company's use of the trade-mark must satisfy the statutory requirements, otherwise the trade-mark could be invalidated. Here is a check-list to ensure your company is using its trade-marks properly:

• Is the trade-mark being used as a trade-mark, not a noun?
• Is the trade-mark displayed in a manner that sets it apart from the rest of the text?
• Is the proper trade-mark indicia (® v. ^TM) being used?
• Is the trade-mark consistently used?
• Are records of evidence of trade-mark use maintained?

Tip 5

Police others

You know your company's marketplace, industry and competitors better than anyone. Be vigilant of who is using which trade-mark. Is it similar to your company's trade-mark? Could the public be confused? Are there known instances of confusion? Are you consistently asserting your company's rights to its trade-marks? The more lax you are in protecting your company's trade-marks, the less distinctive the trade-marks become.

Ashlee Froese
Business Law Group
Lawyer
Trademark Agent(Canada & USA)
Tel: 905.276.0406
E-mail: afroese@kmblaw.com

The comments in this newsletter are of a general nature and are not designed to replace professional advice in specific situations. If you would like extra copies of this newsletter, or you know of anyone who would be interested in joining our mailing list, please contact Cheryl Woolcott at (905) 276-9111.