We wrote recently about establishing a business name (See article on the importance of choosing a distinctive business name).  Once your company has started to gain some “traction” (subscribers, customers) you will turn a corner where it has it’s own brand and identity.  At that point in time you will likely want to protect that identity with a trade-mark.

Some benefits to registering a trademark in Canada include that marks registered in Canada offer all-Canada protection, and are considered by corporate registries before allowing new companies to incorporate, and also, disputes are to be settled in Federal Court, which has jurisdiction across all of Canada – so there is only one dispute resolution mechanism no matter your location in Canada.

Registration in Canada does not protect trademark rights in other countries. In order to protect a mark in another country, it is typically necessary to contact a trademark agent in that country and apply for registration. Like Canada, many other jurisdictions require some continued use to apply for or maintain registration of a trademark.

If you choose not to register a trademark, it will still be protected as an unregistered trademark under the common law.  However, unregistered marks may have lessened rights and protections, and may be enforceable only in the geographical area where the mark is being used.  Two restaurants operating 30 miles apart might both be able to use the same unregistered trademark, and consequently, an unregistered trademark cannot be enforced across Canada unless use can be shown all across the country.

 

Where to Register

The federal agency responsible for registering trade-marks in Canada is the Trade-marks Office in Gatineau,  Quebec.  Application for registration can also be performed online.

 

Costs of Registration

The basic government filing fee to register a trademark is $250 if submitted online or otherwise $300 for each trademark being sought. If the application is successful, an additional government registration fee is required for the certificate of registration.

Please note that the trade-marks office also views a word mark and a logo as a separate application.  Each has it’s own search and comparison process.  This is sensible, as the Nike “just do it” slogan and Nike swoosh can both be separately “ripped off” (or passed off to use technical language) by a person registering their new mark, so the process of researching, publishing and registering each is an independent process of the trade-marks office.

 

Timing

The process is time-consuming, so expect a delay of at least six months after initial filing before receiving a response from the trade-marks office.

Once the office responds, if there are no questions, conflicts or “technical fixes” required, the next step is to allow other registrants the opportunity to oppose its registration, by advertising the mark in the Trade-marks Journal. If there are no oppositions, then (often a year after initial registration) the application is accepted and once registration fees are filed the mark is registered.  Oppositions can be dealt with by amending the application, appealing the decision or abandoning the mark.  It is not unusual for the application process to take 24 months in total.

 

Searching the trade-marks database

It is prudent to check in the Canadian Trademarks Database on the Canadian Intellectual Property Office website to make sure that the Trademark, or a similar mark, is not already registered.

Searching the database can be accomplished by entering search terms, much like a standard search engine, and it quite simple when dealing with simple text names or phrases. Searching logos and other graphics, however, can become extremely complicated and may require the assistance of a registered trademark agent.

There are many examples of companies that have had to change their name as a result of mark infringement.   Even if you are not registering a mark, you may wish to perform a search on the database before selecting a business name, incorporating your company, or spending a lot of money printing business cards and developing marketing materials for your company.

 

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This article is provided for informational purposes only and does not create a lawyer-client relationship with the reader. It is not legal advice and should not be regarded as such. Any reliance on the information is solely at the reader’s own risk. Clausehound.com is a legal tool geared towards entrepreneurs, early-stage businesses and small businesses alike to help draft legal documents to make businesses more productive. Clausehound offers a $10 per month DIY Legal Library which hosts tens of thousands of legal clauses, contracts, articles, lawyer commentaries and instructional videos. Find Clausehound.com where you see this logo.

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