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Aug 17, 2011 - 3 minute read - Comments - legal

What You Need to Know About Trade-Marks In Canada

Trade-marks can be important. They can form an essential part of a business’s branding effort. It is not necessary to register a product name or a logo to establish a trade-mark because use of a name or a logo for a certain amount of time can establish a trade-mark under common law. However, it makes things much clearer if a company registers its trademarks. This is because a registered trade-mark is considered prima facie (direct) evidence of ownership.

What this means is that if someone wants to challenge a registered trade-mark, it falls upon them to prove the owner does not have ownership. If a trade-mark is unregistered, it falls on the supposed owner of the trade-mark to prove that they have established the right to it. This shift in the burden of proof can mean considerable time and lawyer’s fees for the trade-mark owner. For this reason alone, it makes sense to register your important trade-marks.

A trade-mark can be registered as long as it doesn’t contravene the Trade-marks Act. Some of the things that can’t be registered include:

  • names and surnames - John Smith or Smith, Jones and Johnson Partners cannot be registered as a trade-mark. There could an exception to this if you could prove that the name has transcended the person in the eyes of the public (think Walt Disney).
  • clearly descriptive marks - This is to prevent the use of adjectives and adverbs so that they can be available for general use. For example, Smith’s Fresh Orange Juice couldn’t be trademarked because “fresh” is a common adjective.
  • deceptively misdescriptive marks - Your trade-mark has to accurately represent your product. You couldn’t register Bob’s Organic Foods if the food was not in fact, organic.
  • geographic locations that describe the origin of a product - You could not trade-mark Saskatchewan Wheat for example, because it would give you an unfair advantage over all of the other wheat growers in the province.
  • words or designs that are too close to an existing trade-mark
  • words or designs that resemble a prohibited mark - You can’t register a trade-mark that comes too close to a wide variety of government and official symbols. In other words, no Canadian flags in your logo.

These are just some of the prohibitions that will get your trade-mark application denied. Most of these are common sense. If you are unsure as to whether your proposed trademark violates the rules, check with the Canadian Intellectual Property Office before filing your application.

Companies, individuals, partnerships, trade unions, and lawful associations can apply for trade-marks. A registered trade-mark lasts 15 years, which can be renewed every 15 years after that with payment of a fee.

To file a trade-mark application, it currently costs $250 online and $300 otherwise. A certificate of registration will cost an additional $200. As you can imagine, there are an assortment of fees for various forms of paperwork and other requests.

Many businesses choose to use a trade-mark agent to navigate them through the process. Registering a trade-mark can be a tricky process. There are no forms for registering a trade-mark. Applicants are asked to create their own application. For this reason alone, the extra cost of having a trade-mark agent do the work for you might make a lot of sense. A list of trade-mark agents can be found on the government’s website.

It can be difficult to decide whether the time and expense is worth the effort to register a trade-mark. If you market products or services that are heavily reliant on branding to differentiate them in the marketplace, you should give the idea of registration strong consideration.