Your identity in the marketplace
Success in the business world depends largely on the message you convey and the image you project. If people cannot pick you out easily from the crowd, you are likely to be overlooked in favour of an individual or firm with a stronger presence.
A trademark is what identifies your goods or services in the public mind and shapes how your products or services are perceived in the marketplace.
It is no coincidence that some brand names that dominated the North American market in the 1920s are still leaders today. The public gravitates towards familiar names and designs that have become associated with quality and reliability. This is why companies spend millions of dollars nurturing their corporate image.
A registered trademark is a key way of protecting your corporate identity. Registration of your trademark provides legal title to intellectual property in much the same way as a deed gives title to a piece of real estate.
What are trademarks?
Trademarks may be one or a combination of words, sounds or designs used to distinguish the goods or services of one person or organization from those of others in the marketplace.
Trademarks come to represent not only the actual goods or services, but also the reputation, of the producer. As such, trademarks constitute valuable intellectual property.
There are three types of trademarks:
- An ordinary mark consists of words, sounds, designs, or a combination of these, used to distinguish the goods or services of one person or organization from those of others in the marketplace. For example, suppose you started a courier business that you chose to call Giddy-up. You could register these words as a trademark (assuming all legal requirements were met) in regard to the service that you offer.
- A certification mark is used by an individual or organization and licensed to others for the purpose of identifying goods or services that meet a defined standard—for example, the Woolmark design, owned by Woolmark Americas Ltd., for use on clothing and other goods.
- A distinguishing guise comprises the shaping of goods or their containers, or a mode of wrapping or packaging goods, which distinguishes them as being produced by a specific individual or firm. For example, if you manufactured butterfly-shaped candy you could register the butterfly shape as a distinguishing guise.
People occasionally confuse trademarks with patents, industrial designs, copyright, and integrated circuit topographies. Although all of these are forms of intellectual property, they differ as follows:
- trademarks may be one or a combination of words, sounds or designs used to distinguish the goods or services of one person or organization from those of others in the marketplace;
- patents cover new inventions (process, machine, manufacture, composition of matter) and any new and useful improvement to an existing invention;
- industrial designs are the visual features of shape, configuration, pattern or ornament, or any combination of these features, applied to a finished article;
- copyright provides protection for literary, artistic, dramatic or musical works (including computer programs) and other subject-matter known as performer’s performances, sound recordings and communication signals;
- integrated circuit topographies refer to the three-dimensional configurations of electronic circuits embodied in integrated circuit products or layout designs.
Trade name vs. trademark
A trade name is the name under which you conduct your business. A trade name can be registered under the Trademarks Act only if it is also used as a trademark, that is, if it is used to identify goods or services.
For example, let us suppose that you own an ice cream business and that your company is called “A.B.C. Ltd.”:
Example 1: People know your ice cream under the name “A.B.C. Ltd.” because you use this name as a trademark which you place on your ice cream or you use this name in association with your product. You can therefore apply to register the trade name “A.B.C.” as a trademark.
Example 2: People know your ice cream by the name under which you have promoted this product, for example, the name “North Pole.” Even though the official name of your company is “A.B.C. Ltd,” no one associates this name with your goods. Therefore, the name “A.B.C.” cannot be considered a trademark unless you begin to use it as such.
Please note that a trademark registration may be invalidated if a third party in Canada has made prior use of a similar trade name or trademark.
Registered trademark vs. unregistered trademark
Registration of your trademark gives you the exclusive right to use the mark across Canada for 15 years; registration is renewable every 15 years after that.
A registered trademark is one that has been entered in the Register of Trademarks. The Register of Trademarks is the record of all trademarks that have been formally applied for and registered in Canada. The Office of the Registrar of Trademarks is the body that administers the Register.
You are not required to register your trademark — using a mark for a certain length of time can establish your ownership under common law.
Note: You must apply for registration of any mark relating to precious metals. A filing receipt must be shown when such goods go through customs.
Registration is prima facie (direct) evidence of your ownership. In a dispute, the registered owner does not have to prove ownership; the onus is on the challenger. Use of an unregistered trademark, however, can lead to a lengthy and expensive legal dispute over who has the right to use it.
If you fail to use the mark for an extended period, your registration may be removed from the Register of Trademarks. As a result, it may be more difficult to establish legal ownership of the trademark.
What you can and cannot register as a trademark
What can you register?
Your trademark will qualify for registration as long as it does not contravene the Trademarks Act, which sets out the requirements for registration.
What can’t you register?
The kinds of marks that you may not register include the following:
- names and surnames;
- clearly descriptive marks;
- “deceptively misdescriptive” marks;
- words that denote a geographical location commonly known to be the place of origin of such goods or services;
- words on other languages;
- words or designs that are considered confusing with a previously registered trademark or pending trademark; and
- words or designs that nearly resemble a prohibited mark.
Names and surnames
A trademark may not be registered if it is nothing more than a name or surname (for example, John Doe or Jane Smith, Wong, Cohen, etc.).
An exception to this rule is if you can prove that your goods or services have become distinctive under the name or surname so that the word has acquired a secondary meaning in the public mind. Another exception is a name or surname that has meaning other than strictly as a name or surname, that is, it is also a recognizable word or the name of a community, city, town, river, castle, etc. In such cases, you could register your last name for use in association with your business, as long as there were no other reasons to refuse your application.
Clearly descriptive marks
You may not register a word that describes an inherent feature of the goods or services (i.e., a word that is clearly descriptive).
For example, the words “sweet” for ice cream, “juicy” for apples, and “perfectly clean” for dry-cleaner services could not be registered as trademarks. All good apples could be described as “juicy” and all ice cream as “sweet”; these are natural characteristics of the items. If you were allowed to register these words, no other apple sellers or ice cream vendors could use them to promote their goods; this would be unfair. But, again, if you can establish that “Sweet Ice Cream” has become so well-known that people will immediately think of your product (and no one else’s) when they read or hear these words, you may be allowed to register the trademark.
“Deceptively misdescriptive” marks
A further restriction arises when a mark is “deceptively misdescriptive” (clearly misleading). For example, you could not register “sugar sweet” for candy sweetened with artificial sweetener or “air express” for a courier service that uses ground transportation.
Place of origin
You may not register a word that uses a geographical location commonly known to be the place of origin of the goods or services. Allowing you to use such place names as part of your trademark would give you a monopoly with respect to a geographical term; this would be unfair to others. For example, you could not register “Italy” for lasagna. However, you conceivably could register the words “North Pole” as your trademark for bananas, since one would not normally expect bananas to come from the North Pole.
In addition, you may not register a word that misleads the public into thinking that the goods or services come from a certain place when they do not. For example, “Paris Fashions” or “Denmark Furniture” could not be registered as a trademark for those particular goods or services if those goods or services did not originate from that geographical location.
Words in other languages
Words that constitute the name of the goods or services in another language such as: “gelato,” Italian for “ice cream”; “anorak,” Inuktitut for “parka”; or “wurst,” German for “sausage”, may not be registered.
Beware of words, designs, and ideas that are similar to another person’s or another organization’s trademark. If your trademark is confusingly similar to a registered trademark or a pending trademark, it will be refused.
Trademark examiners take into account various factors when determining whether trademarks are confusing, including:
- whether the trademarks look or sound alike and whether they suggest similar ideas; and
- whether the trademarks are used to market similar goods or services.
Let us go back to the example of “North Pole” ice cream. Suppose another company were manufacturing and selling frozen-water products under the registered trademark “South Pole.” The public could easily conclude that “North Pole” and “South Pole” products are manufactured and sold by the same company, and may expect that the trademarks would be owned by the same organization. Hence, your application to register “North Pole” may be turned down on grounds of causing confusion with the registered mark “South Pole,” which is owned by another company.
You may not register a trademark that bears resemblance to certain official marks unless you have the consent of the authority in question. These official designs include the following:
- official government designs, for example, the Canadian flag;
- coats of arms of the Royal Family;
- badges and crests such as those of the Armed Forces and the letters RCMP;
- emblems and names of the Red Cross, the Red Crescent, and the United Nations;
- armorial bearings, flags, and symbols of other countries; and
- symbols of provinces, municipalities, and public institutions.
Subject matter that is obscene, scandalous, or immoral is also prohibited. For example, your trademark may not include profane language, obscene visuals, or racial slurs.
Another prohibition applies to the use of portraits and signatures of living persons or of persons who have died within the preceding 30 years. For example, using the photo of an existing rock group to promote your record store would be prohibited unless you had formal consent to do so.
A trademark will not be allowed to be registered if it consists of a plant variety denomination (right granted to the owner with respect to control over the multiplication and sale of reproductive material for a particular plant variety), or is a mark so nearly resembling a plant variety denomination that it is likely to be mistaken for it, where the application covers the plant variety or another plant variety of the same species.
A trademark will not be registered if it is, in whole or in part, a geographical indication of origin for wines or spirits, where the application is in respect of a wine or spirit that is not produced in the territory indicated by the designation.
Examples of what you may register
- “North Pole” ice cream (if it is not confusing with a registered trademark or an entitled” pending trademark, that is, one with an earlier filing date)
- “Venus” ice cream (mythical, not actual, name)
- “Scrumptillus” ice cream (coined word)
- “True Blue” ice cream (words not normally associated with ice cream)
Examples of what you may not register
- “Sweet” ice cream (unless you can prove that the trademark is distinctive of the applicant)
- “Devonshire” ice cream (unless you can prove that the trademark s distinctive of the applicant)
- “North Pole” ice cream (if “South Pole” is a registered trademark for frozen-water products”)
- “RCMP’s Favourite” ice cream
Who can apply for registration?
The Office does not register a trademark in the name of more than one individual, unless the individuals form a partnership or are engaged in a joint venture, which is considered a lawful association.
How long does registration last?
Your registration is valid for 15 years. You may renew it every 15 years thereafter for a fee.
How much does registration cost?
The cost of registering a trademark depends on the individual applicant’s requirements. In some cases, only a filing fee and a registration fee may be required. However, other fees may also apply. If you appoint a trademark agent to represent you, additional fees will be required for his or her services.
*(excerpt from “A Guide to Trademarks” prepared by the Canadian Intellectual Property Office)