If you’re running a heavily branded, consumer facing company (regardless of whether you’re providing a service or product), the company’s brand is an invaluable corporate asset. In addition, if you are a talent who is raising your own profile, you yourself may be a brand as well. Trademarks law is the ultimate legal tool to protect that asset. Here’s a primer on trademarks law.
What is a Trademark?
In simple terms, almost anything! A trademark may comprise, alone or in combination, word(s), numbers, slogan, designs, symbols, sound, hologram, moving images, taste, colour, texture, mode of packaging, 3-D shapes and/or positioning of a sign, which are used by an entity to identify the source of its products or services from others in the marketplace.
How Does a Trademark Differ from a Trade Name and/or Business Name?
Trade names and business names simply identify the business. The available causes of action that can be used against an infringing party by a trade name/business name owner are limited, as opposed to those available to the owner of a registered trademark. The function of a trademark goes beyond the scope of a trade name/business name to identify the company as the source of the product/service in the marketplace.
What are the Nuances of Canada’s Trademark System?
It is important to note that not all trademarks can be registered in Canada – the Canadian Trademarks Act contains some prohibitions. For example, an entity cannot register a trademark that is (a) clearly descriptive or (b) the name of the wares/services in any language or (c) primarily merely a name or surname or (d) confusing with a previously registered/applied for trademark. However, in some instances, these are not absolute bars and arguments can be made as to the registrability of the trademark. For this reason, it is prudent to discuss the usability/registrability of the trademark prior to embarking on a branding campaign.
Why Register a Trademark?
Given that the trademark is a significant asset of the entity, the prudent business approach is to register the trademark. There are significant advantages to registering a trademark, such as:
Prima facie evidence of ownership
Exclusive ownership rights across Canada
10 year renewable registration periods
An elevated platform from which to assert your rights across brand trolls and infringers
How Long is the Registration Process?
It can take between 18 months and 3 years to obtain a trademark registration in Canada. This includes all steps from filing the trademark application through to obtaining the trademark registration. This estimated time frame depends upon the level of complexity of issues raised during the application process. (i.e. was an opposition lodged, were significant issues are raised during examination. The delay in obtaining a trademark registration does not affect the entity’s ability to use the trademark in Canada.
Trade-mark Availability and Registrability Searches
Although not mandatory, it is prudent to conduct trademark availability and registrability searches prior to embarking on the registration process. This is particularly relevant for the launch of new brands. The trademark search will determine whether there may be challenges that could pose an obstacle to your company’s registration and/or use of the trademark. As mentioned above, not every trademark is capable of registration. Also, the search is important as we can determine whether another entity is already using a trademark that is identical or similar to your company’s trademark.
Interested in International Trademark Protection?
All of the information contained above is relevant to obtaining a trademark in Canada.
Trademark protection is granted on a country by country basis (apart from in Europe, where you can obtain region wide protection). If your company is interested in securing trademark protection outside of Canada, we can manage your company’s global trademark portfolio. There are two ways to proceed to obtain trademark protection outside of Canada, both of which have advantages and disadvantages.
If you are unsure as to whether you currently wish to seek trademark protection outside of Canada, we can file in Canada now and then file in any country thereafter. If we file within the first 6 months after the filing date in Canada, we can claim a priority filing date of the Canadian trademark application filing date. Essentially, this gives you flexibility in determining in which countries you want to seek protection, grants you the same date filing and defers the filing cost in those foreign countries to a later date.
Alternatively, if you know which countries you want to proceed to obtain trademark protection in, we can proceed using the Madrid Protocol system. This system centralizes the administrative aspects of an international trademark portfolio through the World Intellectual Property Office. In some instances, it can simplify the process (i.e. filing in English, centralizing payment of international filing fees, reducing the paperwork). The downside is that all government filing fees must be paid at the same time, the government fees are paid in Swiss currency (which can fluctuate) and for a period of 5 years each of the foreign registrations are susceptible to collapse if the initial trademark registration is invalidated.