Trademarks 

What is a trademark?

A trademark is a word, design, three-dimensional form, sound or color or other combination of these types of elements which is used by one person or entity to distinguish their products or services from those of another and to identify their particular products or services to the consumer.  When you market a new product or service, you build good will in the image of your product.  The color of the package, logo, or the product name, all help to identify your goods or services and distinguish your goods and services from your competitors.  A trademark registration protects the goodwill that attaches to the name or other mark which identifies your goods and services to the buying public.  The traditional boundaries of trademark protection are broadening, allowing people to claim protection for a broader range of distinguishing marks or characteristics for their goods and services.

Consider what the results would be if you were required to change the name under which you sell your goods and services.   Especially when starting a new venture, you will wish to avoid the chance of building public awareness of your goods or services in association with a name or other mark that belongs to someone else.

A trademark owner acquires some limited rights in their trademark simply by adopting and using it.  However, the trademark rights which vest in the owner of a registered trademark are in many ways superior, such that people relying heavily on their trademarks or the goodwill in their brands are often best served by seeking registrations for their trademarks.  The rights of the owner of a trademark registration include the right to exclusive use of the mark throughout Canada, and the ability to sue for infringement of these rights.

Doing a trademark search:

We recommend that the first step in choosing a trademark for use or registration is to conduct a level of trademark searching to gain knowledge of the existing trademark landscape, identify any existing trademarks or other impediments to the possible adoption or registration of your new trademark, and/or to use the results of the trademark search as business intelligence to assess the competitive landscape in advance of launching a new product under a new trademark.

Various levels of trademark searching can be conducted.  We recommend that at a minimum a trademark owner acquaint themselves with any previous marks in the field using free databases available over the Internet.  Again, links to the most useful of these databases can be reached through our website at www.furman-kallio.com.  As in the case of patent databases, however, it is important to realize the limitations of key word or phonetic searching—marks which are spelled or referenced in different ways might be missed by a very basic search. 

Searches of increased accuracy and complexity can also be conducted on your behalf by a trademark lawyer or agent.  A screening search can be performed of pre-existing trademark registrations or applications, or a search which includes the Internet and other common law uses of marks and different language can also be done.  Generally speaking, as the breadth or level of complexity of a search continues, the costs are higher.

Filing a trademark application:

If the landscape appears to be clear to proceed, you can file a trademark application to seek registration of your trademark.  You can file a trademark application to protect a trademark which you have already started to use, or a trademark which you are planning to commence using.  Your lawyer or agent can help you search the existing trademarks registered in Canada for ones which might be confusingly similar to yours, and they might also advise you on the descriptive or distinctive nature of your proposed trademark.  A trademark application can be filed and prosecuted on your behalf by your lawyer or agent. 

How long does it take to register?

In most cases, the registration certificate will not be finally obtained for at least a year to a year and a half from the date of filing of a trademark application.  As such it is often times advisable to file sooner rather than later, if it is anticipated that the registration is desired or required for business or enforcement purposes.

When should you file a trademark application?

Unlike the patent field, where a public disclosure of your idea in advance of filing a patent application can have serious negative consequences, the priority scheme in the trademark field is the exact opposite.  The mark can and should be used in public in association with your goods and services as soon as possible, and even in advance of filing a trademark application if you so desire.  The use of the mark should be properly documented so that the right use priority can be claimed when the trademark application is filed.

What are the rules for trademark registrability?

To be registrable, a trade mark must not offend any of the general trademark registrability criteria set out in the Trademarks Act, and must not be potentially confusing in its channel of trade with a previously filed or registered trademark. 

1.       The general trademark registrability criteria include the following:

2.       the proposed trademark must not be a generic term;

3.       the proposed trademark must not be confusing with an official or prohibited mark;

4.       the proposed trademark must not be "scandalous, obscene or immoral";

5.       the proposed trademark must not falsely suggest a connection with any living or recently deceased person;

6.       the proposed trademark must not be primarily merely the name or surname of an individual who is living or recently deceased; and

7.       the proposed trademark must not be clearly descriptive of the wares or services themselves, nor deceptively misdescriptive. 

These requirements ensure that consumers are not deceived regarding the source of the wares and/or services, and protect consumers and producers alike from the extension of a trademark monopoly to one party for a descriptive term within a channel of trade.

The second prong of trademark registrability is the consideration of the potential of confusion with any previously filed or registered marks in the same channel of trade.  The rights of a trademark owner are conferred by the Trade-marks Act through registration of the trademark, and include the exclusive right to use of the trademark throughout Canada in respect of the wares or services set forth in the registration, subject to adjudication. 

What is trademark infringement?

Under Canadian law, the unauthorized use of a registered trademark on wares and/or services in the same or similar channel of trade in respect of which the mark was registered constitutes trademark infringement.  The test of trademark registrability is roughly the converse of an analysis of trademark infringement – if there is likely not infringement of a prior mark, then the registrability test is likely satisfied.  Infringement exists where there is a deliberate appropriation of the owner's trademark or an essential portion of the mark.  The Court may "deem" that a registered trademark is infringed if it is used on somewhat different wares, or in a different geographical area, or if a "confusing" trademark rather than the identical mark is used.  The rights of a trademark owner are conferred by the Trade-marks Act through registration of the trademark, and include the exclusive right to use of the trademark throughout Canada in respect of the wares or services set forth in the registration, subject to adjudication. 

Public authority marks:

The Canadian Trademarks Act provides under section 9 thereof for the registration of ‘public authority’ trademarks by governments and quasi-governmental bodies.  What constitutes a “public authority” for the purposes of section 9 has been the subject of judicial consideration.  In finding that the Canadian Olympic Association was a “public authority”, the Federal Court of Appeal adopted a test that, to be regarded as a public authority, a body must be under a duty to the public, must be subject to a significant degree of government control, and must be required to dedicate any profit earned for the benefit of the public and not for private benefit.  The public authority mark is not limited to a particular channel of trade, and is registered regardless of confusion with a similar prior mark – as such it has definite advantages to those wishing and able to use it. 

Geographical scope of trademark coverage:

A trademark registration provides you with nationwide protection of your mark, in the country in which it is registered. Once registered, a trademark registration lasts for 15 years and can be renewed.  Obtaining a trademark registration, however, is only half of the battle.  As soon as a trademark is adopted, and after it is registered, the proper measures need to be taken to maintain its distinctive character  if the distinctive character of a mark is lost, the protection attendant therewith can also be lost, leaving the unsuspecting trademark owner without their trademark rights.  By registering your trademarks and taking proper measures in their use, the individual nature of your mark can be maximized and protected.  Your trademark lawyer can assist you in taking the necessary steps to preserve your trademark rights, and to enforce your rights against others who infringe your mark or pass off their goods or services as yours.

Licensing issues:

If your business involves licensing others to use your trademarks, it is essential that you be properly covered by trademark registrations and licensing clauses to maintain your own rights in your trademark.  You should consult with a trademark lawyer to ensure that the proper steps have been taken to protect your rights in your trademarks in advance of allowing the licenses use of your marks.

Using your trademark properly:

Many trademark owners have lost their trademark rights in the past because their marks have been misused.  Take for example  escalator, kerosene, corn flakes, linoleum, dry ice or shredded wheat  these are all examples of trademarks which have been lost by their original owners because they became generic through general or improper use.  The following guidelines will help to ensure that a company's trademarks will be properly honored and will not become generic in the future.  These guidelines apply to advertising, product literature, business documents and correspondence, packaging and labels and any other place where the trademarks are used.

The danger in the successful adoption and use of a trademark is that the mark might become generic.  Once a mark becomes generic, or in other words is widely accepted as a term for the description of the type of goods or services with which it is used rather than with the goods or services of a particular person, anyone can use it.  This is because the mark no longer indicates to the general public or consumers of the products or services in question that the goods or services were made by the trademark owner.  A trademark represents not only a substantial investment of resources by a trademark owner but also an asset which, in the case of a successfully developed mark or market might have significant good will or value attached to it.  For the consumer, a trademark provides a method of differentiating the products or services of various producers and allows them to easily identify their preferred brand choices.

1.  TRADEMARKS ARE NOT VERBS.

It is dangerous to use your trademark as a verb, since you risk the problem of your trademark becoming generically descriptive of the activity to which it is used to refer.

2.  DO NOT PLURALIZE A TRADEMARK.

Since trademarks are adjectives which describe nouns, rather than being nouns themselves, they should not be used in plural form.  Rather than pluralizing the trademark, the nouns which they describe should be pluralized.

In the case of trademarks which end in an "S", however, the treatment should be no different.  The mark should not be adapted to imply the singular tense by removing the "s".  For example:

3.  TRADEMARKS AND TRADE NAMES ARE NOT THE SAME.

Trademarks are different from trade names, corporate names or business names.  Trade names are proper nouns which can be used in the form of a possessive and do not require a generic modifier.  Trade names should not be marked with a trademark symbol.   Many companies use their trade names as trademarks.  For example:

Corporate name:  "These shirts are made by Tommy Hilfiger Ltd."

Trade name:     "These shirts are made by Tommy Hilfiger."

Trade name:     "Tommy Hilfiger’s newest jeans are for women."

Trademark:     "Are those TOMMY HILFIGER jeans?"

4.  TRADEMARKS SHOULD NOT BE USED IN A POSSESSIVE FORM.

Trademarks should never be used in a possessive way, such as by adding " ‘s ", unless the trademark itself is a possessive mark, such as "WENDY’S restaurants" "LEVI’S jeans", or "PEAR’S shampoo".  Trade names, unlike trade marks, can be used in a possessive sense.

5.  AVOID GENERIC USE - TRADEMARKS ARE PROPER ADJECTIVES.

Properly displaying your trademarks will distinguish your mark from the generic language with which they are used.  For example, trademarks should either be used with Initial Caps, used with "Initial Caps" with quotes, or optimally CAPITALIZED COMPLETELY.  Generic terms should always appear after the trademark  e.g. "LITTLE CAESAR’S pizza".  At the very least the generic term should be used after the trademark at least once in each written communication and where possible or appropriate also in all broadcast matter.  Preferably this should be the first time the mark appears.  Some examples of this are:

  FORD car;

  "Kleenex" tissues;

  DELL computer;

  Kodak film; 

  SUBWAY restaurant.

Additional emphasis can be placed on trademarks by using the word "brand" after the mark  example, "SCOTCH Brand transparent tape".  Proper marking, discussed below, should also be considered.

6.  SHOW PEOPLE THAT YOUR MARK IS IMPORTANT TO YOU.

Additional emphasis can be placed on trademarks by using one of the universally acceptable symbols or methods of indicating trademark status.  Some companies make the proper marking of their trademark status a requirement for each trademark on each piece of advertising material, packaging or other communication using their marks.  Some of the marking methods are as follows:

® or Reg. Canadian Intel. Prop. Office if the mark is registered in the Canadian Intellectual Property Office.

™ for marks that are not registered.

An asterisk (*) and footnote that the mark is either "Reg. Canadian Intel. Prop. Office" if the mark is registered in the Canadian Intellectual Property Office, or if the mark is unregistered, "A trademark of X Company."  

Trademark Services:

The following are some of the services which Furman & Kallio can offer to you:

• searches and opinions as to the registrability of trademarks and regarding the advisability of adoption of your proposed mark;

• drafting, filing and prosecution of trademark applications in countries around the world;

• opinions as to whether or not someone is infringing your trademark, or if you are infringing someone else’s trademark;

• searches and opinions on the validity of trademarks;

• commencing trademark impeachment proceedings or challenges;

• advice and assistance in the enforcement of your trademark, or conversely advice and assistance in the case where you are accused of infringing someone else’s trademark;

• assistance in the licensing, assignment or transfer of trademark rights, or other trademark-related aspects of business transactions.  

Top of page     |    Print this page