Other forms of intellectual property

People occasionally confuse trade-marks with copyright, industrial designs, patents and integrated circuit topographies. These are rights granted for intellectual creativity and are also forms of intellectual property. However:

• patents cover new inventions (process, machine, manufacture, composition of matter), or any new and useful improvement of an existing invention;
• copyrights provide protection for literary, artistic, dramatic or musical works (including computer programs), and three other subject-matter known as: performance, sound recording and communication signal;
• industrial designs are the visual features of shape, configuration, pattern or ornament (or any combination of these features), applied to a finished article of manufacture;
• integrated circuit topographies refer to the three-dimensional configuration of the electronic circuits embodied in integrated circuit products or layout designs.

Trade name vs. trade-mark

A trade name is the name under which you conduct your business, whether it be your own name, or the name of a corporation or a partnership or a name adopted for a segment of that business, i.e., a division of a company. The trade name can be registered under the Trademarks Act only if it is also used as a trade-mark, that is, used to identify wares or services. For instance, let's say you own an ice cream business and your company is called A.B.C. Ltd.:

Example 1: People know your ice cream under the name A.B.C., because you use it as a trademark on or in association with your ice cream. You can, therefore, register A.B.C. as a trademark.

Example 2: People know your ice cream under the word you have promoted–for example, "Northpole." Even though the official name of your company is A.B.C. Ltd., no one associates it with your wares. Therefore, A.B.C. cannot be considered a trade-mark unless you begin to use it as one.

In certain circumstances, a trade-mark registration may be declared invalid because of the prior use in Canada of a trade name which is similar to the registered mark. Ideally, you should conduct a search of existing trade names before filing a trade-mark application. To do this, you can consult a variety of sources, including the NUANS database. A search of trade names or company names appearing in telephone directories from cities across Canada is also appropriate. To ensure a thorough search, it is best to hire a trade-mark agent to do the job. Business Development Centre also offers trademark searches as part of the trademark registration process.

Registered trade-mark vs. unregistered trademark

A registered trade-mark is one that is entered on the Trade-marks Register. You are not required to register your trade-mark–using a mark for a certain length of time can establish your ownership through Common Law–but it is highly recommended.

You must, however, apply for registration of a mark for precious metals. Your filing receipt is necessary if your goods must pass through customs.

Registration of your trade-mark gives you the exclusive right to use the mark across Canada for 15 years, renewable every 15 years thereafter. If you wish to apply for a trade-mark in other countries, you must apply to the country in which you seek registration.

Registration is prima facie evidence of your ownership. In a dispute, the registered owner does not have to prove ownership; the onus is on the challenger. Use of an unregistered trade-mark can lead to a lengthy, expensive legal dispute over who has the right to use it.

Keep in mind also that a registered trade-mark is a valuable asset for business expansion through licensing franchises. Note as well that if you fail to use the mark for an extended period, your registration may be cancelled.

Consider this scenario: For the past five years you've been operating a highly successful ice cream emporium under the word "Northpole" in your home town in Nova Scotia. You've never heard of another Northpole and you have never bothered with trade-mark registration. Meanwhile, an Ontario firm has registered the trade-mark "Northpole" to identify its growing chain of spaghetti diners and home brand tomato sauce. While conducting research for a Maritime expansion plan, the Ontario firm discovers your store and serves you with a lawsuit. Depending on the facts established with the Court, this may result in a court order preventing you from using the word "Northpole." This development couldn't come at a worse time, since you were just planning to expand your own business. The situation could have been avoided if you had solidified your clear rights to the trade-mark through registration.

Who can register a trade-mark?

Companies, individuals, partnerships, trade unions and lawful associations may obtain registration of their marks of identification for wares or services, provided they meet the requirements of the Trade-marks Act and Regulations.

How do I register my trade-mark?

You can register a trade-mark by filing an application for registration with the Trade-marks Office in Gatineau, Quebec. Your application then goes through a stringent examination process to make sure that it meets all requirements of the Trade-marks Act. Keep in mind that in most instances your trade-mark must be used in Canada before it can be registered. While your application may be based on "proposed use," you must put your trade-mark into use before registration can occur. In the following sections, we will outline the steps towards registration.

Business Development Centre provides complete trademark application preparation and filing services.

You can view Trademark Filing Packages and Prices here
Trademark Search is available here for only $39.95
Trademark Registration is available here

Check your e-mail tomorrow for Part 3 of the
Guide to Canadian Trademarks.

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