Why This Matters
What is a Trademark?
A trademark is a combination of letters, words, sounds or designs that distinguishes one company’s goods or services from those of others in the marketplace. A trademark is unique. It is important to a company because over time, a trademark comes to stand not only for the actual goods and services you sell, but also for your company’s reputation and brand. It is recommended to be familiar with trademark law in Canada.
What is a brand?
A brand is the image and reputation of your business as it is perceived by your customers. Successful marketing usually includes building a valuable brand by protecting any marks that distinguishes your products and services from others in the marketplace. The best tool used to distinguish a brand from those of your competitors is a registered trademark. Typically, businesses obtain trademark protection for their business name, and any product, service, logo or slogan.
Did you know?
Even if your company name or your business name is registered federally (Corporations Canada), provincially or territorially, it may be recommended to also obtain trademark registration to better protect your brand.
What’s in a name?
Great example here adapted by Canadian Intellectual Property Office
- Company name: Legal name, registered federally, provincially or territorially.
- Example: lululemon athletica inc.
- Business name: Name under which you conduct your business.
- Example: lululemon athletica
- Domain name: Name of your address on the Web.
- Example: www.lululemon.com
- Trademark: A trademark may be one, or a combination of words, sounds or designs used to distinguish your goods and services from others in the marketplace.
- Example: You can view this trademark in the Trademarks Database by entering lululemon)
Why register your trademark?
- Provides proof of ownership
- Provides you with exclusive rights across Canada for 15 years and may be renewed indefinitely
- Helps you to protect your products and services from imitation and misuse
- Allows you to flag an infringement under the Trade-marks Act
- Provides you with licensing opportunities to maximize your trademark’s commercial potential
- Protects your trademark’s value
Your brand has value – Building a brand image is a very important part of marketing. Everything that sets your business apart -—its name, product and service names, slogans, logos, taglines and even sound marks—produces a brand image that your customers come to know. If your brand is distinctive, it will make your customers loyal and give you an edge over your competition. In fact, your brand can become one of the most valuable things about your business as customers come to know it well it over time. This value can become so great that you can use it to bargain for financing with banks and other lending institutions.
Your trademark stands for your brand – Protecting your brand and the products and services it stands for is critical to your future sales. Your trademark is an important part of your brand, and registering it gives you the exclusive right to use it to sell your products and services.
Trademarks include letters, words, logos, product and service names, slogans and more. If you do not protect your trademark, a competitor could use it or something similar, which could confuse your customers.
Five reasons to register your trademark
- It shows that the trademark is yours
- It gives you exclusive rights to use the trademark across Canada for 10 years (and you can renew that indefinitely)
- It stops others from using a confusingly similar trademark
- It allows you to flag infringements by others
- It helps you license your trademark, which you can use to make money and increase your brand’s popularity
The scope of Canadian trademarks law
A trademark is only protected to the extent that it is used by a person to distinguish a product or service from another. Trademarks do not give exclusive rights to a symbol, for instance, but only for the symbol in relation to a particular use in order to distinguish the product from others. Trademarks help potential customers to identify the source of products and thus have a significant impact on trade, especially when product identity is marketed as an extension of the customers’ personal identity. Although any name or symbol could be protected under trademark law, there are issues concerning the limits of that protection. For instance, enforcing protection of a mark and its perception is questionable where there is no actual confusion for consumers. Likewise, protecting a mark against all criticism or allusions, as if it were an actual person, is controversial since trying to protect marks at all costs could be harmful to free speech and free trade.
Trademark Registration Rights
A Canadian trademark registration will give you the exclusive right to use your mark in association with your registered products or services across Canada, and the right to exclude others from using confusingly similar marks.
A registration expires 15 years from the registration date but can be renewed for successive terms for as long as the trademark is in use in Canada.
When amendments to the Trademarks Act come into force, the duration of a registration will be reduced to 10 years. These amendments will also extend trademarks registrations beyond words, symbols and designs to include additional types of marks, such as scents, tastes and textures.
How to register your trademark – See A Guide to Trademarks for details on how to apply for and register a trademark and to see what you can and cannot register. You can apply on your own or hire a trademark agent.
Search for an existing trademark – You need to make sure your trademark is different from those of others. If you have found a trademark that works for your business, the first step is to search the Canadian Trademarks Database to see if it is available. Do this before you put time, money and energy into a trademark that may not be available to use in Canada. The Canadian Trademarks Database includes all active and inactive marks that were either applied for or registered under the current Trademarks Act or former trademark laws.
How to protect your brand with trademarks – A trademark is a combination of letters, words, sounds or designs that distinguishes one company’s goods or services from those of others in the marketplace. A trademark is unique. It is important to a company because over time, a trademark comes to stand not only for the actual goods and services you sell, but also for your company’s reputation and brand. By registering your trademark, you protect it under law from misuse by others, and you gain exclusive rights to use it throughout Canada for 10 years (a term that you can renew).
Resources
Canadian Trademarks – Services and information by the Government of Canada.
Canadian Intellectual Property Office – A guide to trademarks in Canada.
Introduction to the Canadian Trademark Database – CIPO’s Canadian Trademarks Database.
Plan your IP strategy – Considerations for your intellectual property strategy.
Protect your Brand – Your business, products and services have a brand image that is recognizable to customers. Learn how to protect your marketing investment.
Registering trademarks in Canada: – What you need to know about registering trademarks in Canada.
USA American Trademarks – United States Patent and information Office Services and Information (USPTO).
What is Intellectual Property – Understanding that Basics of IP.
World Intellectual Property Organization – Global forum for intellectual property (IP) services, policy, information and cooperation (WIPO).
Recommendations
Applying for a trademark in Canada – File a new or amended trademark or certification mark application – Canadian Intellectual Property Office (CIPO).
Applying for a trademark in the USA – Apply Online – United States Patent and Trademark Office (USPTO).
Trademark Search Canada – Introduction to the Canadian Trademarks Database – Canadian Intellectual Property Office. Learn how to do a search by visiting the Canadian Trademarks Database tutorial.
Trademark Search USA – United States Patent and Trademark Office.
IP Assessment
Intellectual Property Strategy Assessment – BDC’s Intellectual property strategy assessment (CIPO).
IP Awareness Assessment – The IP Awareness Assessment, developed under the joint efforts of United States Patent and Trademark Office (USPTO) and National Institute of Standards and Technology/Manufacturing Extension Partnership (NIST/MEP), allows you to assess your intellectual property awareness. Following the completion of the assessment, you will receive a customized training material.