| Please keep in mind that this is not legal advice. The | | | | corporation may have a lousy corporate name and |
| information provided herein is for educational purposes | | | | want to use a commercial name instead. These things |
| only. If you would like to get in touch with a Canada | | | | being said, the trade name must be registered, does |
| trademark lawyer to help you with your application or | | | | not afford the corporation protection as would a |
| trademark dispute, then you are encouraged to seek a | | | | trademark and, on contracts between the corporation |
| professional. | | | | and third parties, the full corporate name must be |
| In this article, I'll be discussing some of the basic | | | | identified (e.g. Pete's T-Shirt Shop c/o/b as 123456 |
| questions about trademarks, including what exactly is a | | | | Ontario Inc.). This is meant to protect the public so that |
| trademark, what is the Canadian trademarks | | | | they know exactly who they're dealing with - namely, |
| database, do I have to register a trademark, and what | | | | a corporation instead of a sole proprietorship, |
| are the advantages of registering a trademark. | | | | partnership, joint venture, association, etc. |
| Definition | | | | Canadian Trademarks Database |
| A trademark is a word, symbol or design, or a | | | | The Canadian Trademarks Database is the official |
| combination of these, used to distinguish the goods or | | | | database maintained by the Canadian Intellectual |
| services of one person or organization from those of | | | | Property Office which presents regularly updated |
| others in the marketplace. | | | | content about trademarks in Canada. The database is |
| There are three main kinds of Trademarks in Canada: | | | | a very flexible tool that can be searched using various |
| 1. Ordinary Marks; | | | | keywords and fields. The results display information |
| 2. Certification Marks; and | | | | concerning the applicant, the status of the application, |
| 3. Distinguishing Guise. | | | | the description of the wares and services and when |
| These kinds of Trademarks will be discussed briefly in | | | | they were first used, and the action taken by the |
| turn. | | | | government (and even third parties) concerning the |
| Ordinary Marks | | | | trademark. |
| The Canada Trade-Marks Act defines an Ordinary | | | | Do I have to Register? |
| Trademark as: | | | | You are not required to register a trademark in |
| "a mark that is used by a person for the purpose of | | | | Canada. Many trademarks are established under |
| distinguishing or so as to distinguish wares or services | | | | common law (i.e. historical judge made law) on the |
| manufactured, sold, leased, hired or performed by him | | | | basis that a party has been using the trademark for a |
| from those manufactured, sold, leased, hired or | | | | long time. However, you should carefully understand |
| performed by others," | | | | and appreciate the advantages of doing so sooner |
| So a trademark is a word, symbol, picture, or | | | | rather than later, and the disadvantages of failing to do |
| combination of these things used to distinguish a | | | | so. |
| product (called a "ware") or a service of one business | | | | Advantages to Registering a Trademark |
| from another that offers similar wares or services. | | | | Let's be clear here. Simply registering a trademark |
| Certification Mark | | | | doesn't automatically mean that you will be able to use |
| A Certification Mark is defined as follows: | | | | it for your specific wares and services to the exclusion |
| "a mark that is used for the purpose of distinguishing or | | | | of everyone else in Canada. There may be situations |
| so as to distinguish wares or services that are of a | | | | where someone has been using an unregistered |
| defined standard with respect to | | | | trademark longer than you have and, even if you have |
| (a) the character or quality of the wares or services, | | | | registered it, you may be required to stop using it |
| (b) the working conditions under which the wares have | | | | because of the other party's common law rights (it |
| been produced or the services performed, | | | | depends on the circumstances of the particular |
| (c) the class of persons by whom the wares have | | | | matter). |
| been produced or the services performed, or | | | | In any event, registration is proof of ownership. As |
| (d) the area within which the wares have been | | | | such, registration acts as both a powerful shield and a |
| produced or the services performed,from wares or | | | | sword against potential infringers. |
| services that are not of that defined standard;" | | | | The primary advantage to registering a trademark is |
| So a Certification Mark simply identifies products or | | | | the direct evidentiary value that comes with |
| services that meet a defined standard (e.g. wool | | | | registration. Registration is direct evidence that you |
| mark). This kind of trademark can be licensed or used | | | | have been using a trademark beginning from a certain |
| with permission by other companies to indicate certain | | | | period of time. Registration requires a comprehensive |
| standards. | | | | review, which adds to your trademark's authority. |
| Distinguish Guise | | | | Hence, you will be able to point to registration in |
| A Distinguishing Guise is defined as follows: | | | | support of your use of the trademark through Canada |
| "(a) a shaping of wares or their containers, or | | | | for your particular wares and services for the duration |
| (b) a mode of wrapping or packaging waresthe | | | | of the registration period (i.e. 15 years). If infringers |
| appearance of which is used by a person for the | | | | come around, then you'll be able to bring an action |
| purpose of distinguishing or so as to distinguish wares | | | | against them and use your registration as evidence to |
| or services manufactured, sold, leased, hired or | | | | seek damages and prevent them from using their |
| performed by him from those manufactured, sold, | | | | trademark. |
| leased, hired or performed by others;" | | | | Disadvantages of Not Registering a Trademark |
| So a Distinguishing Guise identifies the unique shape of | | | | It is highly advisable to register your trademark as soon |
| a product or package (e.g. Coca-Cola bottle). | | | | as possible. Even if you don't register a trademark, you |
| Trade name | | | | can still use it. The problem, however, may come when |
| Don't confuse a trademark with a "trade name", which | | | | a party anywhere else in Canada with similar wares |
| is simply a name a corporation registers to carry on | | | | and services registers a trademark that is similar to the |
| business under that name. You'll often find | | | | one you are using. The result may be that a judge |
| corporations, perhaps numbered corporations like | | | | may order you to stop using that similar or confusing |
| 123456 Ontario Inc. or 123457 Canada Ltd., carrying on | | | | Trademark on the basis that someone else registered |
| business or c/o/b as "X" (here, "X" could mean "Pete's | | | | it first (i.e. back to the evidentiary nature of registering |
| T-Shirt Shop"). You'll also find the term "operating as" | | | | a trademark). |
| being used. The idea behind the trade name is that a | | | | |