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In the article “Choosing the right name for your business in Quebec“, we explained the different steps to take before filing your company name. Today, Lex Start focuses on a new issue: the protection of your trademark in Canada.
In order to succeed, you have to stand out from the crowd. This is probably the most popular advice given to entrepreneurs. One sure way to recognize a unique product is its trademark.
A good trade-mark not only allows the business that registers it to distinguish itself, but also protects it from those who wish to use it fraudulently.
In this article, we will explain what a trademark is and the different steps in order to register it.
What is a trademark in Canada?
To understand what a trade-mark is, it is important to dissociate the trade-mark from several potentially confusing concepts.
TRADEMARK VS BUSINESS NAME
Although the two are interrelated, an entrepreneur will be mindful to dissociate the notion of “trademark” from the “business name”.
According to CIPO (the Canadian Intellectual Property Office), a trade-mark is a set of letters, words, sounds or symbols that differentiates a company’s product or service from others in the marketplace. For example, the Canadian tea distributor David’s tea has the trademark David’s tea and the way it is spelled (“DAVIDsTEA”). A trade-mark is therefore used to cover either a product, a service or both.
The name of the company is meant to designate a business. In our example, David’s Tea also happens to be the name of the company, but the two do not necessarily match. For example: a company doing business under the name of B.B.B. Inc. and selling “It wakes you up! coffee” will seek to register the wording “It wakes you up!” as a trademark rather than the name of its company.
TRADEMARK VS COPYRIGHT
Copyright is used to protect original literary, musical, dramatic and artistic works and differs from trademarks. For example: the book (story) of Harry Potter is protected by copyright. The use of the brand “Harry Potter” on clothing is protected by a trademark.
TRADEMARK VS PATENT
A patent protects new inventions or any new and useful improvement that can be made to an existing technology. For example, “Lulemon” is a trademark that characterizes “Lulelemon” products but it also holds a patent for the design of its yoga pants.
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Choosing your trademark in Canada
Making a difference is important. Making a difference by respecting the law is even better.
When choosing a trademark, you have to consider that the law and case law prohibit the use of certain elements as a trademark.
Here are some examples of wording that should not be used for your trademark:
- First and last names (unless it can be proven that the goods or services were known by that name);
- False and misleading descriptions;
- Foreign language words that define the product (e.g. “Pasta” if you want to sell pasta);
- Words or designs that are misleading or confusing with already registered trademarks;
- Words or designs that resemble trademarks that have been banned in the past (e.g. use of the Canadian flag, symbols of other countries or the coat of arms of the English Royal Family);
- Trademarks with an ” evident ” description that would prevent competing products from using these terms to promote their product (e.g. “sweet” for a sweet ice cream);
- Location names designating the geographical origin of the product (e.g. “Italy” to register a trademark selling pasta and pizzas).
With all this information, you can now begin to think about the name of the future trademark that will describe your products or services.
But wait a minute!
Your choice is made? Excellent! In order to apply for a trade-mark, you must first verify that it respects the provisions of the Trade-marks Act. Therefore, before submitting your application for registration, you will have to conduct a name search to make sure that:
- The trade-mark is compliant;
- No one has applied to register a trade-mark with a similar name for goods or services. The search is then done in the Canadian trade-mark database;
- There are no similar trade names (keeping in mind that there is no central registry for all of Canada for trade names).
“I’m using a name I haven’t registered yet”
Technically, a trademark exists without formalities, but its registration serves many purposes.
Let’s take the example of Jonathan:
Jonathan creates a company under the name “Joni Entraînement Inc.”. His company opens several training centers in Montreal under the name “Scorpion Boxing”.
Jonathan’s training centers work very well, but he does not offer any services outside of Montreal. Except for Jonathan, no one will be able to open a gym in Montreal with a similar name and his brand “Scorpion Boxing” (which exists without formalities) will be protected as long as Jonathan uses it in the geographic area where it is known (in Montreal).
The fact that Scorpion Boxing exists in Montreal allows Jonathan to oppose the registration of a trademark with a similar name, on the grounds that his trademark (which exists without formalities) was used before.
If Jonathan chooses not to register his trademark, someone in Toronto will be free to use the name “Scorpion Boxing”. Conversely, if Jonathan registers “Scorpion Boxing” as a trade-mark, it will be protected throughout Canada and Jonathan will have legal proof that he was and is still using the name “Scorpion Boxing”.
Protect your trademark to and against everyone
Once you have completed your name search, you may proceed with the registration of the trademark.
The registration allows you to obtain an exclusive right on its use.
In Canada, trademark registration lasts for 10 years, but it can be renewed indefinitely. However, keep in mind that a trademark that is registered in Canada is only registered for Canada. If you wish to extend the registration of your trademark to the United States, you will need to file an application in that country (and also go through the preliminary trademark name search process).
Registration helps prevent your competitors from committing unfair acts against you by passing off their products as your own or by trying to mislead the consumer in any other way. A registered trademark is a federally registered. Therefore, it helps prevent other businesses from using the same or a similar name as the one you have registered.
A company that uses your trademark fraudulently, for example by creating confusion between your products, is likely to be sued for infringement and/or counterfeiting.
In order to proceed with the registration of your trademark, you will have to:
- Fill out a trade-mark registration application form;
- Provide a logo, if applicable, including a description of the colors;
- Indicate the date of first commercialization of the services or products (if applicable);
- Pay the production fees in order for the Canadian Intellectual Property Office to process the application for registration.
- Wait (We know…Nowadays, the registration of a trademark can take a few years).
As you will have understood, a trademark is a bit like the Gollum ring that a seasoned entrepreneur will seek to protect at all costs. A registered trademark is unique and can have a significant impact on a company’s reputation and image as it is used.
At Lexstart, we can assist you in your trademark search and registration process.
Do not hesitate to contact us via chat or email if you have any questions regarding your trademark.