Trade-marks

Navarrete Perinot p.c. can provide you with a full range of trade-mark related services, including counselling on trade-mark strategies and branding, preparing and filing Canadian and foreign trade-mark applications, prosecution of your trade-mark application, renewal of your trade-mark registration, litigation to enforce trade-mark rights including domain-name disputes or defend against alleged infringement, licensing, and the transfer of ownership in trade-marks.

In order to help our clients understand the trade-mark system and process, we provide the following brief outline of the nature of trade-marks and the process of obtaining a trade-mark in Canada.

For further information on how we can assist you with your trade-mark needs contact Glen Perinot at gperinot@nplaw.ca

What is a trade-mark?

A trade-mark is any word, phrase, logo, symbol, design, alphanumeric grouping, or combination thereof, adopted and displayed on wares or associated with services, and used for the purpose of identifying the products or services, and to distinguish them from the wares or services of others. The primary purpose of a trade-mark is as a source indicator, to prevent consumers from becoming confused about the source or origin of the product or service. A trade-mark generally indicates that the wares or services come from the same source as all other wares or services associated with the same mark. A trade-mark serves to symbolize the quality or characteristics of a product or service.

Trade-name

A trade-name, not to be confused with a trade-mark, is a name under which a particular business is carried on, whether by an individual, partnership, or company. A trade-name displayed on wares or associated with services may also function as a trade-mark.

Certification Marks

Another type of trade-mark is a Certification Mark. Certification marks identify products or services that meet a defined standard (e.g. the Woolmark design on clothing). Generally, the owner of a certification mark licenses others the use of the mark in association with goods or services that meet a defined standard.
Distinguishing Guise

A distinguishing guise is the shaping of wares or their containers, or the mode of their wrapping or packaging, to the extent that these are distinctive. A distinguishing guise identifies the unique shape of a product or a package. For example, the shape of a particular bottle, or the shape of a pill is a distinguishing guise and may be a trade-mark. A distinguishing guise trademark may allow you to protect the unique shape of your product or package.
Creating rights in a trade-mark

Aside from creating rights by registering a mark, certain rights are created by actual “use” of the trade-mark on wares or in association with services, or making-known that trade-mark in Canada (these rights are referred to as common lawݠrights). Absent an registered trade-mark, if an owner can establish that the general public recognizes the trade-mark, then the owner has rights in that trade-mark and can prevent others from using a confusingly similar mark.

Should you register your trade-mark?

Although it is not necessary to register a trade-mark since as soon as a trade-mark is properly used common law rights arise, such rights are generally weak rights compared to the rights for a registered trade-mark. The common law rights that arise upon mere use of the trade-mark are restricted to the geographical region in which the trade-mark is used, or where the owner can establish a reputation in that trade-mark. Common law trade-mark rights give rise to the suit known as passing off,ݠwhich also codified in section 7 of the Trade-marks Act.
What are the advantages of registration?

Although it is not necessary to register a trade-mark in order to use it there are, nevertheless, some important advantages if one does register, including:

  • a registered trade-mark can be enforced throughout Canada, whereas an unregistered trade-mark can be enforced only in those areas where it has been used to establish a beneficial reputation (referred to as goodwillݩ
  • the owner of a registered trade-mark may initiate infringement proceedings in either the provincial or federal courts, whereas the owner of an unregistered trade-mark may not initiate trade-mark infringement proceedings, but must rely on passing offݠproceedings
  • after a trade-mark has been registered for five years it generally cannot be challenged on the basis that another party used it, whereas there is no such similar cutoff for an unregistered trade-mark
  • a Canadian trade-mark registration can be used to claim priority in registering the trademark in foreign countries, whereas trade-marks protected merely by common law rights have no such advantage.

Registering a Trade-mark

The following are the various stages in registering a trade-mark in Canada:

  1. 1. Filing

In Canada, a trade-mark application may be filed based on:

  1. use or making known in Canada;
  2. on foreign use and application/registration;
  3. on proposed use in Canada; or
  4. any combination thereof.

2. Formalities

After an application has been filed/submitted, the application receives a filing date, an application number, and a is file is created (all from the Trade-marks Office). The application will be entered on the Trade-marks Database and other databases. The application is now described as Pendingݠand moves to examination. The applicant will receive a formal filing acknowledgement and a proof sheet showing all the information about the application.

3. Examination

The trade-mark examiners make an initial determination as to the registrability of the trade-mark, reviewing the application and ensuring that:

  1. the mark is not the name or surname of an individual who is living or has died within the preceding thirty years;
  2. the mark is not clearly descriptive or deceptively misdescriptive of the character or quality of the wares or services in association with which it is used or proposed to be used;
  3. the mark is not a common generic term;
  4. the mark is not confused with a registered trade-mark;
  5. the mark is not prohibited by the Trade-marks Act;
  6. the mark is not a geographical indication; and
  7. the wares or services therein are described in ordinary commercial terms.

The trade-marks examiner will then issue an Official Action or Examiner’s Report detailing any deficiencies or objections to the application. If it cannot be approved, the applicant will be advised the reasons; it may possible to amend certain aspects of an application so it can be approved. The applicant may also submit arguments if the examiner has objected to the application. When and if an application is approved, the applicant will receive a formal notice of approval.

4. Advertisement

If it is approved, the application will be published in one issue of the Trade-marks Journal. Within 2 months of being advertised the application can be opposed by someone else and will then be removed from the normal processing cycle until the opposition has been resolved.

5. Allowance

If no opposition is filed, the application is allowed. The applicant will receive a notice that the application has been allowed for registration. This does not mean that the trade-mark is registered the applicant must submit the required registration fee of $200 for the trade-mark to be registered. If the application is for a proposed mark, the applicant may request extensions of time until the trade-mark is actually in use.

6. Opposition

If the application is opposed after being advertised in the Trade-marks Journal, the Trade-marks Opposition Board will forward to the applicant a copy of the statement of opposition. Should the applicant wish to contest the opposition, the applicant will have one month to serve and file a counter statement. Both parties will, in turn, have an opportunity to file affidavit evidence and written arguments, as well as to make submissions at an oral hearing.

7. Registration

The applicant must send in the registration fee and, if the application was for a proposed trade-mark, a declaration of use indicating that the mark is being used. The trade-mark now moves from “Pending” status and becomes a Registered trade-mark.ݠThe registrar at the Trade-marks Office will then issue the applicant a Certificate of Registration that includes the registration number, registration date, as well as the filing particulars. Registration is valid for a period of 15 years from the date of registration and is renewable indefinitely for additional 15 year terms.

For further information on how Navarrete Perinot p.c. can assist you with your trade-mark needs contact Glen Perinot at gperinot@nplaw.ca