Trade-Mark Basics

Added on Friday, March 1, 2013

WHAT IS A TRADE-MARK?

A trade-mark is a legal and business tool that can take almost any form as long as it is unique. Very simply, any special elements that you are using to help promote and distinguish your business from other businesses can be trade-marks. For example, trade-marks might be:

  • logos
  • names (including band or artist names)
  • slogans
  • colours
  • packaging (shape, colour, etc.)
  • sounds (and even scents!)
  • or any combination of these.

The Canadian Trademarks Act defines a trade-mark as “a mark that is used by a person for the purpose of distinguishing or so as to distinguish wares or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others.”

What are some examples of trade-marks?

The Canadian Broadcasting Company’s (CBC) logo, affectionately known as the “exploding pizza,” is an example of a logo trade-mark, while “Bombardier” is an example of a name trade-mark. “I am Canadian” is an example of a slogan trade-marked by Molson’s.  The Toronto Maple Leaf’s blue maple leaf is an example of a combination mark (logo and name).

All of these logos, names and slogans have become synonymous with each brand’s identity.

Trade Name vs. Trade-mark

These two terms are often confused with one another. A trade name is the name under which an individual or organization conducts business–either the registered business name or the incorporated name (if the business is incorporated).

The fact that you have a trade name (business name or incorporated name) does not mean that you have a trade-mark. A trade-mark is a unique “mark” used to distinguish your business in the marketplace (logos, names, slogans or a combination of these).

WHY REGISTER A TRADE-MARK?

Common-law Trade-marks

A marriage can either be registered officially or remain common law, and so it is with trade-marks: You don’t have to register your trade-mark in order for you to have legal rights. Under common law, your trade-mark exists as soon as you begin to use it; however, a common law trade-mark is weak in comparison to a registered trade-mark.  For example, if someone infringes your unregistered (common law) trade-mark and you sue them, it can be much harder to prove your case. Also, your rights under common law are restricted to the specific region (such as Toronto, or Sudbury) in which you have established a reputation. Registered trade-marks are valid Canada-wide.

Advantages of Registered Trade-marks

There are a number of advantages to registering a trade-mark:

  • Your trade-mark would be valid Canada-wide, even if your business were restricted to a small portion of the country, province or city.
  • Nobody else in Canada could register the same trade-mark, since the trade-mark registry is a public record, and there is the assumption that everyone can access and understand these records.
  • Anyone who attempts to adopt a similar or the same trade-mark can be sued for infringement; a registered trade-mark infringement suit is much simpler, less time consuming and less costly than common law trade-mark action suits.
  • The Trade-marks Office will refuse anyone who tries to apply for the registration of similar marks, and will send you notification of any that might be confused with yours, so that you would be able to oppose it.
  • A registered trade-mark is always already assumed to have “goodwill”; therefore, there is no need to prove this in court.
  • After 5 years of registration, it is very difficult for someone to challenge your trade-mark.
  • Licensing your trade-mark (for franchises, for example) is much easier with registered trade-marks.
  • Registering your trade-mark will add to the cultural value of your business, and might well add to the capital value of your business if you are seeking investors, since the trade-mark registration works effectively like an asset.

When Should You Register a Trade-mark?

You should register as soon as you begin to affiliate your brand or identity with your unique “mark” (word, logo, phrase, etc.).  As you begin the registration process (the search), you might discover that someone is already using a same or similar mark you thought to be original. It’s better to find out early, than several years after using and establishing your brand identity.  If you were sued for trade-mark infringement, you would likely have to abandon your trade-mark and pay damages to the true owner.

 

Julie Stewart is a Toronto entertainment lawyer and registered Canadian trade-mark agent.  She is also an artist and filmmaker.  Julie founded Blackline Art + Entertainment Law in 2008  – Blackline Law is a boutique entertainment and intellectual property law firm based in downtown Toronto.

 

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