Trade-Marks in Canada

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?

Contact me for to discuss, or check out my information page.

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