chapter 2

Trademark Registration

Trademark

Definition

Word, design, or combination of both that is used to identify the goods and services of one person from those of another person.

—S.2 Trade–marks Act

In the competitive and constantly changing digital marketplace, a trademark is a very valuable asset. It differentiates your business and the quality of your products from those of your competitors. Your trademark carries your reputation with it, and reinforces long-term relationships with your buyers.

It’s important to be aware of trademarks not only to protect your rights, but also to ensure that you’re not infringing on the rights of others when creating one. The Canadian Intellectual Property Office (CIPO) is responsible for registering and enforcing your rights as a mark holder. They’re a resource you can access to gather information, ask questions, check the registry of current marks and begin the registration process. The Trademarks Act is the federal legislation that broadly defines which marks can be protected by law, as well as outlining your rights as a trademark holder and how to enforce them.

Types of Marks

Summary

(i) Ordinary Mark — Words, designs or a combination of both.
(ii) Certification Mark — Used by an organization and given to others to identify that their goods meet a certain standard.
(iii) Distinguishing Guise — The shape of goods or the containers that distinguish them.

Before registering your mark formally with CIPO, there are some factors to consider. First, check CIPO registry to make sure your mark is unique. This increases your chances of being approved. CIPO also advises that you hire a trademark agent. These lawyers are authorized to represent you throughout the process, which can be complex. An agent is the best way to protect your rights, especially if your mark is opposed.

There’s no legal requirement for you to register your trademark but there are benefits for your brand if you do. Registering your mark gives you the exclusive right to use it in Canada. In the event that someone does use your mark, it’s easier for you to take legal action because the registration is enough proof that you own the mark. An unregistered mark holder can only enforce their rights on the basis of “passing off,” which is difficult and expensive to prove. A trademark is an asset to your business that is worth protecting, and registering your mark is the best way to do that.

Registered Marks

(i) Property — can be sold/licensed.

(ii) Give the holder exclusive rights.

(iii) Deters others from using it.

(iv) Proof of ownership.

 

Unregistered Marks

(i) Using your mark for extended time can provide rights.

(ii) More difficult and expensive to bring legal action.

Always remember that the law is fluid and subject to change. Although trademarks are an established area of the law, be sure to stay informed about the changes relevant to you and your business. CIPO is a good resource for keeping up to date and ensuring that your rights are maintained.

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3. Privacy — Anti Spam

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