Don’t Get Caught In Great Trademark War – Register Your Brand

Don’t Get Caught In Great Trademark War – Register Your Brand

The incorporation of a company or the registration of a business name provides little protection of that name in Canada. Even if a provincial or federal corporate authority accepts your name, there could be a competitor operating a business under a similar name in the same industry. Another company could have applied for or registered the name with the Federal Trade-marks Office. If another person has already incorporated a company, registered a business name or applied for a trade-mark using similar words, you very well may be open to liability There are many benefits in seeking registration of a trade-mark, some of which are:

  • A trade-mark is considered an asset. Registration will increase the value of a company/business, will assist in securing investors/financing and can be used as security in financial transactions.  Further, registration is valuable in the event of business expansion through licensing and it is a prerequisite when franchising.
  • Registration provides a trade-mark owner with the exclusive right to use the mark throughout Canada. Without registration, a trade-mark owner relies solely on common law rights which generally are restricted to the territory or province where the mark has been used.  For example, if a trade-mark owner learns that a third party recently adopted the same or similar trade-mark in another area of Canada, and the trade-mark owner did not register its mark, it very well may be impossible to have that third party cease use of the mark.
  • Registration provides a trade-mark owner with the freedom to advertise in and/or expand its business into other provinces in the future. For example, registration avoids a trade-mark owner from later being disentitled to use its mark or circulate advertisements displaying the mark in another province if a competitor has since adopted the same or similar mark.
  • If a business displays its corporate name or trade name on products or promotional materials as a trade-mark, the name can be registered as a trade-mark in Canada. For example, the incorporation of a company and the registration of a sole proprietorship or partnership provides little protection of a trade name.  To obtain the exclusive right to the name throughout Canada, and to prevent others from using a similar corporate or business name, it should be registered as a trade-mark.
  • The Trade-marks Office will act as a guardian to the trade-mark and will refuse any application for a confusing mark filed by a third party.
  • Registration will assist in discouraging potential infringers from using the same or similar trade-mark.
  • After a trade-mark has been registered for five years, and used continuously by the trade-mark owner in that period of time, it becomes “incontestable” which limits the grounds a third party may use to attack the registration. For example, a third party could not seek to have the registration cancelled based on prior use of the same or similar mark in Canada.
  • The Certificate of Registration can be deposited with Canada and US customs in order to prevent the importation/exportation of goods bearing an infringing trade-mark.
  • Registration of a mark in Canada can be used as a basis to obtain registration for the same mark in foreign countries.
  • Registration provides the ability to initiate legal action in the Federal Court which decisions are enforceable throughout Canada. When relying solely on common law rights, it would be necessary to initiate legal action in each province where affected which is significantly more costly and time consuming.
  • Registration prevents a trade-mark owner from later be denied registration of the mark if a third party has since filed for or registered the same or similar mark. Further, registration prevents a trade-mark owner from later becoming disentitled due to the public notice of the adoption of Prohibited or Official Mark by a government body, public authority, university, etc.

Trisha Doré

Trisha Doré is a guest blog contributor. She is a registered Trade-mark agent and has been practising in the field of trade-mark laws since 1989. She specializes in the preparation, filing and prosecution of trade-mark applications and oppositions, and advises clients on specific strategies in the development and evolution of trade mark portfolios.

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