The most successful businesses are those that maintain brand recognition and reputation with their customers. Customers tend to purchase goods and services that are regularly associated with a particular name, design, logo, slogan or any combination thereof. The first step in gaining brand recognition and reputation is to use your trademark in commerce. Businesses will spend tens of millions of dollars a year in marketing and advertising, to maintain a particular image and goodwill in the minds of consumers. The following details the steps and considerations in protecting your trademarks, including the benefits of registering your marks in Canada.
What is a Trademark?
A trademark consists of any word, design, logo, slogan or any combination of these, which are used or proposed to be used by an individual or company to distinguish its goods or services from those of others. These are considered traditional trademarks.
Additionally, marks are typically assessed on a scale from strong to weak. Stronger marks are considered arbitrary, fanciful or invented terms. Whereas, weaker marks are considered descriptive or general. “Apple” for computer products is considered a strong or arbitrary mark, whereas “Cheddar” for cheese is considered a weak or descriptive mark. Some marks may even lose their status of protection over the years like “Xerox” or “Kleenex,” which have been considered to be generic.
Non-traditional trademarks include sounds, scents, moving images, modes of packaging, textures, holograms, colours, tastes, or any combination of these, used to distinguish the goods or services of an individual or company from those of others. These types of trademarks are typically more difficult to register.
Non-Registrable Trademarks
Trademarks that contravene the Trademarks Act cannot be registered. Generally, these trademarks include the following:
Confusingly Similar Registered/Pending Marks
Trademarks that are confusingly similar to an already registered or previously-filed mark cannot be registered. In determining whether your proposed mark is confusingly similar to a registered or previously-filed mark, an overall assessment must be made based on the similarities of the marks when viewed side-by-side, as well as the goods, services and channels of trade provided.
Prohibited Marks
Trademarks that are identical or similar to official marks cannot be registered unless you have obtained consent from the organization. Official marks include any official government designs, coat of arms, badges and crests, symbols of provinces, municipalities or public institutions, flags and symbols of other countries, and names or emblems of the Red Cross or United Nations.
Moreover, trademarks considered to be obscene, scandalous or immoral cannot be registered. This includes marks that are derogatory in language, as well as those containing obscene visuals or racial slurs.
Furthermore, signatures and portraits of living people or those who have died within the last thirty (30) years cannot be registered as trademarks.
Names & Surnames
A trademark that is considered merely a name or surname of a living person or someone who has died within the last thirty (30) years cannot be registered unless it can be shown that the word has another significance that is considered the primary meaning of the word.
Descriptive Marks
A trademark that merely describes a character or quality of the goods or services cannot be registered. For instance, the use of the word “beauty” in connection with make-up products or services would likely be descriptive. Terms deemed descriptive create a monopoly over certain words and prevent others from using them.
Deceptively Misdescriptive Marks
Trademarks that include a geographic name and the associated goods or services do not originate from that location are considered deceptively misdescriptive and cannot be registered. The test is whether the consumer would be misled into believing that the goods or services originate from the geographic name in the mark.
Place of Origin
Trademarks that merely describe where goods or services derived from cannot be registered. This includes a place of business, area, region or country which has an established reputation as a source of production for goods and services of that nature, as well as a place recognized as a manufacturing, trading or industrial center likely to be the source for certain products.
Translated Marks
Trademarks that name or describe the goods or services in any language cannot be registered. For instance, you would not be able to register “Gelato” for ice cream products.
Trademarks vs. Trade names
Trademarks identify the particular source of goods or services. Trade names are the names in which businesses operate, which may be different than the trademarks used by that business. For instance, you may operate a business under the trade name “URBN Clothing,” but sell clothing under the brand name “Onthe6.” In this scenario, you may seek to register “Onthe6” as a trademark, since you are selling clothing under this brand name. However, many companies use the same trademark as their trade name. In this instance, you may seek registration over the trade name as a trademark (i.e. registration of “URBN Clothing”).
Domain Names
Domain names contain the portion of the website address. It is desirable from a branding perspective to use your trademark as a domain name. This helps consumers associate your mark with the goods or services that you provide. Domain names are registrable, subject to the same federal trademark laws as any other trademarks.
Rights & Protections
Trademark owners do not have to register their marks in order to hold rights. Rights are afforded to owners through what is known as “common law” rights, if they have used their trademarks for a certain period of time. Common law trademarks are interchangeably known as unregistered marks and are often annotated with the use of the ™ symbol.
However, registered trademarks provide several benefits, especially if you are disputing the unlawful use of a confusingly similar mark against yours. Applying for and registering a trademark in Canada will prevent others from registering or seeking to register a confusingly similar mark. A registered mark will often be annotated with the use of an ® symbol.
If an owner chooses to register a trademark with the Canadian Intellectual Property Office (CIPO), they will receive the sole and exclusive right to use the mark across Canada for ten (10) years. Trademarks are renewable every ten (10) years, so long as the mark is still in use and upon paying a fee. Upon registration, the owner of the mark will receive a registration certificate that provides proof of ownership over the mark. One risks losing its rights in and to the mark if they fail to use it or fail to provide evidence of use.
Clearance Searches
Trademark clearance searches are essential to businesses that wish to register and use a particular mark in association with its goods or services. These searches are typically conducted before filing any domestic or international applications.
The purpose of these searches ensures that your proposed mark is available for use and registration and does not infringe upon the rights of others. Although these searches are not a requirement, they are highly recommended to anyone seeking registration of a trademark.
It is also recommended that you search for similar businesses or trade names. As mentioned, many businesses or trade names are also used as trademarks. Trade names are recorded in the provinces in which they are registered to do business. A comprehensive clearance search will typically include all prior registered or pending trademarks with CIPO, as well as other business and trade names used within Canada.
Application Process & Fees
To register a trademark with CIPO, an application must be submitted online or by mail together with an application fee. If filed online, the application is accompanied by a $336 government filing fee for the first class of goods or services, plus an additional $102 for each additional class of goods and services. On January 1, 2021, the fees for certain trademark services increased by 2%. For a complete list of the new trademark fees, please refer to CIPO’s website: http://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/h_wr02003.html.
A filing date will be issued upon receipt of the application and confirmation of filing requirements by CIPO. The filing date is extremely important, as it provides notice to others in the event of a dispute between confusingly similar marks.
CIPO conducts a thorough examination of the application. This consists of searching the Trademarks Register for any prior registered or pending applications that are confusingly similar to your proposed mark, as well as determining whether there are any deficiencies in your application.
If an examiner objects to the application after examining the application and conducting a search, you must fully respond to each of the objections in order to overcome them. If you do not respond to the examiner by the deadline issued in the Office Action, then the Trademarks Registrar will consider the application abandoned. If the examiner does not accept your responses and issues a refusal, then you have the option to appeal to the Federal Court of Canada for reconsideration.
This examination will continue throughout the application process, including the advertisement/publication of your mark in the Trademarks Journal. When a mark is published, it provides an opportunity for others to oppose your application within two (2) months (subject to any extensions) based on several grounds. Trademark opposition proceedings are very similar to court proceedings and may take several years to resolve depending on the issues involved. If no opposition is filed within the prescribed time or the opposition is properly dismissed, then the application may proceed to registration.
Overall, the trademark application process can take anywhere from 18-24 months from its filing date to registration. Once a trademark proceeds to registration, the owner will receive a registration certificate and the mark will be entered publicly in the Trademarks Register.
International Rights & Protection
If companies wish to expand into different countries and markets, they should consider registering and seeking protection in those other countries. This will ensure the protection of your mark anywhere it is registered and used commercially. This can be achieved by filing under the Madrid Protocol through the use of your initial application with CIPO in countries that are signatories.
Conclusion
Trademarks will be entitled to greater protection in Canada if they are registered as opposed to unregistered. Although the trademark application process is long and costly to some clients initially, the long-term benefits certainly outweigh any disadvantages. Once registered, you may enforce your trademark throughout Canada and oppose any marks deemed confusingly similar. Businesses build their brands by working with their marketing teams to create brand recognition, reputation and goodwill in the minds of consumers through the continual and exclusive use of their marks.
For more information on the trademark application process or in seeking protection, Ranieri Law provides complimentary initial consultations.
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