Client Question – Does a Valid Trade-mark Have to be Registered?

Posted on: May 21, 2014

Q: I have not registered my business slogan. Does this mean it is not trade-marked? 

A: A trade-mark can be words, drawings, slogans or names that distinguish one’s good from the goods of someone else.  Protection of a trade-mark can occur under statute or the common law.  This means that a trade-mark can be protected by virtue of registration with the Register of Trade-marks maintained by Canadian Intellectual Property Office under the Trade-marks Act or, if not registered, the mark can still be protected under common law as long as the mark is distinctive of your goods and services in the region where you use it.

So, as long as your name is being used to distinguish your goods and services, it is still a valid trade-mark and subject to protection even though it is not registered. As an owner of a non-registered trade-mark, you can still bring legal action against someone who is misrepresenting their goods and services with your goods or services or trade-mark.  This is called an action for passing off.  However, you cannot bring an action for infringement which is only available to registered marks.

While registration is not necessary for the creation of rights to a trade-mark or the protection of those rights, some benefits of trade-mark registration include proof of ownership; further protection with an action for infringement under the Trade-marks Act; exclusive rights across Canada for 15 years which can be renewed indefinitely; prevention of others from using a confusingly similar trade-mark; and facilitation of your ability to licence your mark to others.

Denese Espeut-Post is a registered trade-mark agent in the Trade-marks Office.  Contact Avery Law Office to assist you with your trade-mark needs, registrations and maintenance.

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