All About Canadian Trademarks
By Nesreen Sarras | December 31, 1999
|CO||What is a trademark, and how is it different from a trade-name?|
A trademark can be a word, a string of letters or numbers, a phrase or a symbol used by one business to distinguish its wares and services from competing businesses. Colour is often used in a trademark and in some countries, sounds, such as the distinctive sound of the Harley Davidson motorcycle, may be registered as trademarks.
A trade-name is the name under which any business is carried on. While many trade-names are used as trademarks, such as GENERAL MOTORS®, many others are merely registration numbers, such as 123456 Ontario Ltd. or the names of the business owner, and do not qualify as trademarks.
|CO||What is copyright and a registered patent? What is the difference between these and trademarks?|
A trademark is a member of a family of what are called 'intellectual property rights'. Other members of the family include patents, copyright, industrial designs, integrated circuit topography, plant breeder's rights and confidential information.
A registered patent protects a mechanical, chemical, biological or material invention such as a new engine or drug. The invention must have a function and the patent provides the owner with the right to exclude others from making, using or selling the invention for a period of 20 years (after the filing date of the patent application).
A copyright protects the expression of ideas in fixed forms such as music, literature, artistic works and software. Copyright lasts for the life of the author plus 50 years and prevents unauthorized copying.
Industrial designs protect the visual features of an object, which have no function. Shapes of kitchen appliances and furniture are often protected by registered industrial designs that endure for 10 years.
A registered integrated circuit topography protects the three-dimensional structure of an integrated circuit and a registered plant breeders' right protects a new variety of plant.
Finally, although they cannot be registered, the law protects valuable confidential information and trade secrets. Persons breaching obligations of confidence can be sued.
|CO||What are the different types of trademarks people should be aware of?|
There are four different types of trademarks. Here are the definitions and a few examples.
|CO||Who should be concerned about trademarks?|
All businesses, big and small, should be concerned about their trademarks. Trademarks often embody the goodwill and reputation of the business, its products and its services. They are extremely valuable assets that can be sold and licensed.
In some cases, a company's trademark (like Coca Cola®) can be worth more than all of its physical assets -- tens of billions of dollars!
|CO||Why would someone want to register a trademark?|
There are important benefits obtained from registration of a trademark. It gives the owner exclusive use of the trademark across the country of registration, even though the mark may only be used in one or two places. It also gives the owner access to processes and remedies set out in the Trade-marks Act, such as infringement proceedings.
A Canadian trademark registration will only protect the trademark in Canada. To protect a trademark in the USA, for example, you must apply for registration there. International treaty allows registration in the USA (and many other countries) based on registration in Canada.
Foreign registrations are often based on Canadian registration. Without registration, a trademark's protection is limited only to the geographical area in which it is known. Therefore, the user of an unregistered trademark in Vancouver would not be able to prevent its use by a Toronto competitor.
|CO||What are the steps involved in registering a trademark?|
Step 1: Search
A trademark can be registered by its owner or by a registered trademark agent engaged to represent the owner in the Trade-marks Office. An application must be completed and contain the information specified in the Trade-marks Act. The application will request information like the name of the applicant, a description of the mark and a description – in commercial terms – of the goods and services used in association with the mark.
Step 2: Apply
Step 3: Assess & Reply
If the Examiner thinks the applied-for mark might be confused with a previously registered mark, then he/she will issue an 'office action' requesting the applicant to provide a reason, using facts and legal references why their trademark should be registered.
If the office action is not satisfactorily overcome, the application will be refused.
If an objection is filed, an 'opposition proceeding' is commenced. If the applicant fails to overcome the objections, the application will be refused. If no objections are filed within the time period allotted, the Examiner will allow the trademark for registration.
Step 5: Final Payment & Registration
|CO||Once registered, what does the trademark owner need to watch our for, and what must they do to maintain their trademark?|
Once a trademark becomes a valuable asset it may fall prey to counterfeiters, who might place a valuable trademark on inferior goods, and infringers who attempt to lure away customers by using a confusingly similar trademark on their products.
For example, counterfeit Levi's® jeans and counterfeit Rolex® watches end up costing those companies millions of dollars in lost sales. Even your local flea market sells counterfeit goods and are regularly raided to seize bogus T-shirts or watches.
Samples of confusing trademarks are: Calcutron and Kaltron for watches, MEGO and LEGO for toys and Coffee-Mate and Coffee Friend for coffee creamers.
Trademarks can be abused and registered rights lost. To maintain trademark rights, renewal fees must be paid. As well, the owner must only use the trademark as it is registered and should always use the superscript 'TM' symbol to give notice of the trademark to the public.
The owner of the trademark must always be in control of how the mark is used. For example, using a trademark as a generic name for a product or service is fatal to the validity of a trademark.
|CO||Who can help with the trademark process?|
The Canadian Intellectual Property Office (CIPO) provides a booklet that describes the application and examination process. This information can be found on the CIPO website, http://cipo.gc.ca. Many individuals do file their own applications, however, given the importance of trademarks to a business, a registered trademark agent should be engaged.
A registered trademark agent is qualified to represent trademark applicants before the Canadian Trade-marks Office. These individuals possess experience and training in the field of trademarks and many of them are lawyers as well.
A trademark agent should be consulted to do a search of the trademark prior to filing, and provide an opinion on any problems the application might encounter. If problems do arise, the trademark agent knows how to submit the written responses necessary to resolve objections to the application.
|CO||What are the advantages and disadvantages of using an agent, versus doing it yourself?|
It is possible to file a trademark application yourself and many people do it. However, an agent can obtain a search and render an opinion on the feasibility of using the mark before the application is filed.
The agent can also help properly describe all the wares and services used in association with the trademark, ensuring the broadest protection possible. As well, in the event of a serious objection by an Examiner or an opposition proceeding, a trademark agent possesses the legal and procedural knowledge to submit an effective argument on the applicant's behalf.
|CO||Where can people find trademark information?|
The best trademark information is found in the Canadian Intellectual Property Office at http://cipo.gc.ca. The Internet contains many intellectual property sites, many of which provide information about trademarks.
Devising and registering a trademark can be an intricate process. Take the information you've learned in this workshop and get down to business! Remember to research everything involved; from choosing the type of trademark your company requires to protecting it. In the end, you should be proud of your trademark and the company it represents.