What is a trade-mark?
A trade-mark is a word, slogan, logo or design which your business uses in association with its wares and services. It serves to identify the source of the wares and services.
So wait, I use a logo in my business. Are you saying I already have a trade-mark?
Yes. You have what is called an “unregistered” trade-mark. A trade-mark can either be registered with the Canadian Trade-Marks Office (“TMO”) or unregistered.
Neat! So what does having an unregistered trade-mark mean for my business?
As an offensive tool, a trade-mark grants you certain rights, including the right to stop other businesses from using a similar trade-mark, but can be limited to geographical areas, and you may have to prove that there is actual damage to your business. As a defensive motion, having a trade-mark and using it consistently builds goodwill in your business and helps to prevent other businesses from trying to stop you from using that trade-mark.
Why would you register a trade-mark?
Registration grants additional rights, including the exclusive right to use your trade-mark across Canada, and a right to sue other businesses or persons for “infringement” of your trade-mark.
Only registered trade-marks grant the right of suing for infringement, which does not require proof of damages. Businesses with an unregistered trade-mark will have to prove that a competing business is attempting to “pass off” their goods or lure consumers away from you.
As a defensive motion, registration allows other businesses to search for your trade-mark on the register, and after 5 years, your trade-mark is virtually incontestable. That alone can deter other businesses from using your trade-mark, and eliminate the cost of you needing to stop them.
A registered trade-mark also facilitates licensing and the transfer of the trade-mark in the sale of your business. Also consider that once you have a registered trade-mark, it is much easier to refer to as actual property owned by your company, rather than as a vague marketing concept.
Should I really be worried about other businesses stealing my logo?
Yes, for two major examples. One: A trade-mark identifies the source of your wares and services. If a competing business begins to sell sub-par goods using your trade-mark, consumers will assume it is your business, and it will destroy the goodwill you have accumulated. Two: If another business is already using your trade-mark (because it was the first to use it), you may be prohibited from continuing to use your trade-mark. This would mean re-branding and could be a substantial cost.
What about the cost of registration? It’s a bit steep.
We spread out the cost of the application over the two year process. Your registration is also good for 15 years and renewal is cheaper than re-applying. Furthermore, the cost of suing someone or being sued in a trade-mark suit is generally higher for non-registered trade-marks.
How can I get more information?
You can also follow this blog by clicking on the “Follow” button.