Trade-Marks Guide (page 2 of 13)
Your identity in the marketplace
Success in the business world depends largely on the message you convey and the image you project. If people cannot pick you out easily from the crowd, you are likely to be overlooked in favour of an individual or firm with a stronger presence.
A trade-mark is what identifies your goods or services in the public mind and shapes how your products or services are perceived in the marketplace.
It is no coincidence that some brand names that dominated the North American market in the 1920s are still leaders today. The public gravitates towards familiar names and designs that have become associated with quality and reliability. This is why companies spend millions of dollars nurturing their corporate image.
A registered trade-mark is a key way of protecting your corporate identity. Registration of your trade-mark provides legal title to intellectual property in much the same way as a deed gives title to a piece of real estate.
What is a trade-mark?
A trade-mark is a word (or words), a design, or a combination of these, used to identify the goods or services of one person or organization and to distinguish these goods or services from those of others in the marketplace.
Trade-marks come to represent not only the actual goods or services, but also the reputation, of the producer. As such, trade-marks constitute valuable intellectual property.
There are three types of trade-marks:
- An ordinary mark consists in a word (or words), a design, or a combination of these, used to identify the goods or services of one person or organization and to distinguish these goods or services from those of others in the marketplace. For example, suppose that you started a courier business, which you chose to call “Giddy-up.” You could register these words as a trade-mark (assuming all legal requirements were met) in regard to the service that you offer.
- A certification mark is used by an individual or organization and licensed to others for the purpose of identifying goods or services that meet a defined standard, for example, the Woolmark design, owned by Woolmark Americas Ltd., for use on clothing and other goods.
- A distinguishing guise consists in the shaping of goods or their containers, or a mode of wrapping or packaging goods, which distinguishes them as being produced by a specific individual or firm. For example, if you manufactured butterfly-shaped candy, you could register the butterfly shape as a distinguishing guise.
People occasionally confuse trade-marks with patents, industrial designs, copyright, and integrated circuit topographies. Although all of these are forms of intellectual property, they differ as follows:
- a trade-mark is a word (or words), a design, or a combination of these, used to identify the goods or services of one person or organization and to distinguish these goods or services from those of others in the marketplace;
- a patent covers a new invention (process, machine, manufacture, composition of matter) and any new and useful improvement to an existing invention;
- an industrial design consists in the visual features of shape, configuration, pattern, or ornament (or any combination of these), applied to a finished manufactured article;
- a copyright provides protection for a literary, artistic, dramatic, or musical work (including a computer program), as well as three other subject matter, namely, performances, sound recordings, and communication signals;
- an integrated circuit topography refers to the three-dimensional configurations of the electronic circuits in integrated circuit products or layout designs.
Trade name vs. trade-mark
A trade name is the name under which you conduct your business. A trade name can be registered under the Trade-marks Act only if it is also used as a trade-mark, that is, if it is used to identify goods or services.
For example, let us suppose that you own an ice cream business and that your company is called “A.B.C. Ltd.”:
Example 1: People know your ice cream under the name “A.B.C. Ltd.” because you use this name as a trade-mark which you place on your ice cream or you use this name in association with your product. You can therefore apply to register the trade name “A.B.C.” as a trade-mark.
Example 2: People know your ice cream by the name under which you have promoted this product, for example, the name “North Pole.” Even though the official name of your company is “A.B.C. Ltd,” no one associates this name with your goods. Therefore, the name “A.B.C.” cannot be considered a trade-mark unless you begin to use it as such.
Please note that a trade-mark registration may be invalidated if a third party in Canada has made prior use of a similar trade name or trade-mark.
Registered trade-mark vs. unregistered trade-mark
Registration of your trade-mark gives you the exclusive right to use the mark across Canada for 15 years; registration is renewable every 15 years after that.
A registered trade-mark is one that has been entered in the Register of Trade-marks. The Register of Trade-marks is the record of all trade-marks that have been formally applied for and registered in Canada. The Office of the Registrar of Trade-marks is the body that administers the Register.
You are not required to register your trade-mark — using a mark for a certain length of time can establish your ownership under common law.
Note: You must apply for registration of any mark relating to precious metals. A filing receipt must be shown when such goods go through customs.
Registration is prima facie (direct) evidence of your ownership. In a dispute, the registered owner does not have to prove ownership; the onus is on the challenger. Use of an unregistered trade-mark, however, can lead to a lengthy and expensive legal dispute over who has the right to use it.
If you fail to use the mark for an extended period, your registration may be removed from the Register of Trade-marks. As a result, it may be more difficult to establish legal ownership of the trade-mark. For information regarding “Use in Canada”.