An introduction to trademarks
Why should trademarks matter to you?
Trademarks law is simply the most effective legal tool for protecting your brand. Like most businesses, yours likely depends on branding for success, especially if any of the following describes your business:
- Your customers know you by your branding
- Re-branding would take a lot of effort
- Your competitors really like your branding, too - in fact, they’d like it for themselves
Most businesses benefit from at least a basic understanding of trademarks. If you like your branding and want to continue using it, then trademarks law should matter to you. Of course, brands are more valuable to some businesses than to others. Consumer goods companies live and die by their branding. On the other hand, niche B2B businesses tend to rely more on personal relationships. Your interest in trademarks will depend on the value of branding to your business.
What is a trademark?
Trademarks law protects elements of your branding from misuse. Your branding might include words, letters, numbers, designs, symbols, slogans, colour schemes or even uniquely shaped products or packaging, or combinations of these things. Each of these elements can qualify as a trademark, as long as you use it to distinguish your goods and services from those of other businesses.
If you are in the business of offering certifications, like product-quality or compliance certifications, the symbols or designations you allow qualifying recipients to use may also qualify as a special type of trademark known as a “certification mark”.
How can you protect your trademark?
There are two main paths to protect a trademark in Canada: using the trademark, and applying to register the trademark with the Canadian Intellectual Property Office (CIPO).
Use of a trademark, even without applying to register it, provides some protection—known as “common law” rights. Those rights, however, are limited to where your trademark has gained a reputation, i.e. where your brand is known.
You “use” a trademark with goods if it appears on the product, its packaging or it accompanies the product when your customer receives it. You use a trademark for services if you include it in advertisements for your services or if you display it when performing your services.
Should you register your trademark?
Registration offers significant benefits over unregistered (common law) rights, including:
- Putting third parties on notice about your rights
- Valuable legal presumptions that can help you win and save money in legal disputes
- Canada-wide protection for your trademark, even if your business is local
- Preventing later registration of trademarks deemed confusingly similar to yours
- A defence in lawsuits against allegations by third parties that your trademark infringes their trademark rights
Simply put, registration offers years of greater certainty for a key pillar of your business. Like good insurance, the upfront costs help avoid major expenses down the road. Usually, the process is straightforward with predictable costs and timing. For most businesses, then, it makes sense to apply to register any high-value or critical trademarks.
How does the registration process work?
CIPO handles all applications to register trademarks. If you decide to apply to register your trademark, you will need to decide whether to apply yourself or hire a registered trademark agent to represent you. Most businesses hire an agent to handle the highly technical application process.
The application includes information about the trademark and you (as the intended owner of the trademark registration), and a list of the products and services with which you are using or intend to use your trademark. Once filed, CIPO will review it for formalities and issue a filing receipt. Around a year to a year and a half after filing, a trademarks examiner will examine your application for substantive compliance with trademark laws and regulations. For example, the examiner may raise objections concerning the content of the application, or the registrability of your trademark. For example, the examiner could object to your trademark because:
- It is “primarily merely” the name of a living or recently living person
- It clearly describes the listed products and services, or a characteristic of the products and services
- It deceptively misdescribes the listed products and services, or a characteristic of the products and services
- It is not inherently distinctive
- It is confusing with a registered trademark
When assessing confusion between your trademark and another trademark, the examiner will consider several factors, including:
- The similarities in the appearance or sound of the trademarks or the ideas they convey
- How long each trademark has been used
- The “inherent” distinctiveness of the trademarks – trademarks are more likely to be confusing with each other if they are coined terms rather than descriptive terms
- The similarities between the goods and services listed in association with the trademarks
- The similarities between the sales channels of the trademarks
Any objections are set out in an examiner’s report. You will have a fixed period of time to respond to the report, either by arguing against the objections or by amending your application to address them.
Once any objections have been overcome, your application is approved for “advertisement”, a formal publication process by CIPO. At that point, third parties have a two-month window to oppose the registration of your trademark.
Most applications proceed to allowance without opposition. When they do happen, though, oppositions can be complex and time-consuming; they often take two or more years to resolve. Following opposition, CIPO will either allow or refuse registration of the trademark.
Ultimately, your registration will remain in force for 10 years, renewable indefinitely. However, after three years of registration, CIPO can cancel your registration unless you can prove that you have used the trademark within the previous three years.
How much does registration cost?
Most trademark applications proceed from application to registration without opposition and without significant objections from examiners. In those cases, the process takes about 15 to 24 months. If you hire an agent, the process typically costs between $2000-$4000 per trademark, including government fees and the trademark agent’s fees.
The main cost drivers are the complexity of your file and your agent’s fees. If your trademark is opposed and you continue to pursue registration, costs can escalate. You can always abandon your application if you encounter difficulties.
How do trademarks work in other countries?
If your business plans to operate outside of Canada, you probably will want to apply to register your trademarks abroad, too. Trademark registrations only offer country-specific protections. For example, your Canadian trademark registration will not help you protect your trademark in the US. You must file file an application in the US as well if you want to be protected in that country.
Fortunately, your Canadian trademark application can help you file applications abroad. If your Canadian application is your first application for your trademark, you can receive the benefit of your Canadian filing date abroad, provided that you file your foreign applications within six months of the Canadian filing date.
You can also use your Canadian application or registration as the basis for an “international application” under the Madrid System, which allows you to file applications in multiple countries using a centralized system. Your Canadian trademark agent can help you file trademark applications abroad.
Should you use the ® and ™ symbols?
Once you have an inventory of your trademarks, preserve your rights by continuing to use and enforce them. Avoid eroding your rights by making sure that you use your trademarks in a distinctive way. One way of distinguishing your trademarks is to use a different style or colour from surrounding text.
Another way of calling attention to your trademarks is to use common designations like the registration ® and trademark ™ symbols. Using these symbols can be helpful if someone challenges your trademarks. You should only use the registration symbol ® once your trademark is registered and only with the products and services listed in your registration, but you can use the ™ symbol any time.
Although we recommend their use, some businesses find the ® and ™ designations unsightly. Fortunately, they are optional, and they have no official status in Canada. That is not true in other countries, though, so you should obtain local advice if you plan to use your trademarks in other countries.
Do you need to actually use your trademark?
You may have heard that with trademark rights you either “use it or lose it”. That’s true, even if you have a trademark registration. An unused trademark is vulnerable to third-party attack in the CIPO or in court.
You can meet the requirement to “use” a trademark by licensing it to others to use. For example, you might hire another company to manufacture products that you sell as your own. In that case, you can license your trademark to the other company so that it can apply your trademark to the products it manufactures for you. If your licence is properly drafted, that other company’s use of the trademark will accrue to you.
Consult a trademark lawyer to review your licence agreement. Improper licensing can cost you your trademark rights.