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Trademark

May 13th, 2012 | By | Category: Intellectual Property

Trademark

A trade-mark is a word, a symbol, a design (or a combination of these features), used to distinguish the wares or services of one person or organization from those of others in the marketplace. Trade-marks come to represent not only actual wares and services, but the reputation of the producer. As such, they are considered valuable intellectual property. A registered trade-mark can be protected through legal proceedings from misuse and imitation.

The Canadian Intellectual Property Office is dealing with all matters regarding for a trade-mark: www.cipo.ic.gc.ca

There are three basic categories of trade-marks:

  1. Ordinary marks are words or symbols (or a combination of these features), that distinguish the wares or services of a specific firm or individual. Suppose you opened a courier business which you called “Giddy-up.” You could register the words as a trade-mark (assuming all legal requirements were met) for the service you offer.
  2. Certification marks identify wares or services which meet a defined standard. They are owned by one person but licensed to others to identify wares or services which meet a defined standard. Examples are: the Woolmark design owned by Woolmark Americas, Ltd., for use on clothing and other wares and the logo of the Association of Professional Engineers.
  3. Distinguishing guise identifies the shaping of wares or their containers, or is a mode of wrapping or packaging wares. If you manufactured candy moulded to look like butterflies, you might want to register the butterfly shape as a trade-mark under “distinguishing guise.”

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 progams), 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 Trade-marks 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 trade-mark on or in association with your ice cream. You can, therefore, register A.B.C. as a trade-mark.

Example 2: People know your ice cream under the word you have promoted-for example, “North Pole.” 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 (Newly Updated Automatic Name Search) 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.

Registered Trade-Mark vs. Unregistered Trade-Mark

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 “North Pole” in your home town in Nova Scotia. You’ve never heard of another North Pole and you have never bothered with trade-mark registration. Meanwhile, an Ontario firm has registered the trade-mark “North Pole” 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 “North Pole.” 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.

Trade-Mark Agents

Preparing a trade-mark application and following through on it can be a complex task, particularly if a third party challenges your right to the mark. You may file on your own, but it is highly recommended that you hire a trade-mark agent to do so on your behalf.

In order to become a trade-mark agent, a Canadian resident must have worked in the field of trade-marks for at least 24 months, and have passed the qualifying examination. A resident of Canada, who is a barrister or solicitor, or a notary in the Province of Quebec, may become a trade-mark agent by passing the qualifying examination or working in the area of trade-mark law for at least 24 months.

An experienced, competent trade-mark agent who is well-briefed can save you problems caused by such obstacles as a poorly-prepared application or inadequate research. If you intend to register marks in other countries, the use of a trade-mark agent is strongly recommended.

You can find a list of trade-mark agents on CIPO’s Web site. However, the Trade-marks Office cannot recommend any particular agent to you. Your local telephone directory is another source of agents’ names. Once you’ve appointed an agent, the Trade-marks Office will correspond with no one else about your application. You may, however, change agents at any time.

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.

What You Can and Cannot Register as a Trade-Mark

What can you register?

Your trade-mark will qualify for registration as long as it does not contravene the Trade-marks Act, which sets out the requirements for registration.

What can’t you register?

The kinds of marks that you may not register include the following:

  • names and surnames
  • clearly descriptive marks
  • “deceptively misdescriptive” marks
  • words that denote a geographical location commonly known to be the place of origin of such goods or services
  • words on other languages
  • words or designs that are considered confusing with a previously registered trade-mark or pending trade-mark
  • words or designs that nearly resemble a prohibited mark

Names and surnames

A trade-mark may not be registered if it is nothing more than a name or surname (for example, John Doe or Jane Smith, Wong, Cohen, etc.). An exception to this rule is if you can prove that your goods or services have become distinctive under the name or surname so that the word has acquired a secondary meaning in the public mind. Another exception is a name or surname that has meaning other than strictly as a name or surname, that is, it is also a recognizable word or the name of a community, city, town, river, castle, etc. In such cases, you could register your last name for use in association with your business, as long as there were no other reasons to refuse your application.

Clearly descriptive marks

You may not register a word that describes an inherent feature of the goods or services (i.e., a word that is clearly descriptive). For example, the words “sweet” for ice cream, “juicy” for apples, and “perfectly clean” for dry-cleaner services could not be registered as trade-marks. All good apples could be described as “juicy” and all ice cream as “sweet”; these are natural characteristics of the items. If you were allowed to register these words, no other apple sellers or ice cream vendors could use them to promote their goods; this would be unfair. But, again, if you can establish that “Sweet Ice Cream” has become so well-known that people will immediately think of your product (and no one else’s) when they read or hear these words, you may be allowed to register the trade-mark.

“Deceptively misdescriptive” marks

A further restriction arises when a mark is “deceptively misdescriptive” (clearly misleading). For example, you could not register “sugar sweet” for candy sweetened with artificial sweetener or “air express” for a courier service that uses ground transportation.

Place of origin

You may not register a word that uses a geographical location commonly known to be the place of origin of the goods or services. Allowing you to use such place names as part of your trade-mark would give you a monopoly with respect to a geographical term; this would be unfair to others. For example, you could not register “Italy” for lasagna. However, you conceivably could register the words “North Pole” as your trade-mark for bananas, since one would not normally expect bananas to come from the North Pole. In addition, you may not register a word that misleads the public into thinking that the goods or services come from a certain place when they do not. For example, “Paris Fashions” or “Denmark Furniture” could not be registered as a trade-mark for those particular goods or services if those goods or services did not originate from that geographical location.

Words in other languages

Words that constitute the name of the goods or services in another language such as: “gelato,” Italian for “ice cream”; “anorak,” Inuktitut for “parka”; or “wurst,” German for “sausage”, may not be registered.

Avoiding confusion

Beware of words, designs, and ideas that are similar to another person’s or another organization’s trade-mark. If your trade-mark is confusingly similar to a registered trade-mark or a pending trade-mark, it will be refused. Trade-mark examiners take into account various factors when determining whether trade-marks are confusing, including:

  • whether the trade-marks look or sound alike and whether they suggest similar ideas; and
  • whether the trade-marks are used to market similar goods or services.

Let us go back to the example of “North Pole” ice cream. Suppose another company were manufacturing and selling frozen-water products under the registered trade-mark “South Pole.” The public could easily conclude that “North Pole” and “South Pole” products are manufactured and sold by the same company, and may expect that the trade-marks would be owned by the same organization. Hence, your application to register “North Pole” may be turned down on grounds of causing confusion with the registered mark “South Pole,” which is owned by another company. For more information on confusingly similar trade-marks, please see subsection 6(5) of the Trade-marks Act.

Prohibited marks

You may not register a trade-mark that bears resemblance to certain official marks unless you have the consent of the authority in question. These official designs include the following:

  • official government designs, for example, the Canadian flag;
  • coats of arms of the Royal Family;
  • badges and crests such as those of the Armed Forces and the letters RCMP;
  • emblems and names of the Red Cross, the Red Crescent, and the United Nations;
  • armorial bearings, flags, and symbols of other countries; and
  • symbols of provinces, municipalities, and public institutions.

Subject matter that is obscene, scandalous, or immoral is also prohibited. For example, your trade-mark may not include profane language, obscene visuals, or racial slurs. Another prohibition applies to the use of portraits and signatures of living persons or of persons who have died within the preceding 30 years. For example, using the photo of an existing rock group to promote your record store would be prohibited unless you had formal consent to do so.

Examples of what you may register

  •  “North Pole” ice cream (if it is not confusing with a registered trade-mark or an entitled pending trade-mark, that is, one with an earlier filing date)
  • “Venus” ice cream (mythical, not actual, name)
  • “Scrumptillus” ice cream (coined word)
  • “True Blue” ice cream (words not normally associated with ice cream)

Examples of what you may not register

  •  “Sweet” ice cream (unless you can prove that the trade-mark is distinctive of the applicant)
  • “Devonshire” ice cream (unless you can prove that the trade-mark s distinctive of the applicant)
  • “North Pole” ice cream (if “South Pole” is a registered trade-mark for frozen-water products”)
  • “RCMP’s Favourite” ice cream

How Do I Register My Trade-Mark?

You can register a trade-mark electronically by filing an application for registration online 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.

How Much Does It Cost?

The cost of registering a trade-mark depends on the individual applicant’s requirements. In some cases, only a filing fee and a registration fee may be required. However, other fees may also apply. If you appoint a trade-mark agent to represent you, additional fees will be required for his or her services.

The basic federal government costs are:

  • $250 (non-refundable) if submitted online or in any other case $300 for each trade-mark applied for;
  • $200 for a certificate of registration, if your application is successful.

Five-Step Examination Process

When the Trade-marks Office receives your application, it does the following:

  1. Searches the trade-marks records to find any other trade-mark that may come into conflict with the one you’ve submitted and, if one is found, informs you of it.
  2. Examines the application for compliance with the requirements of the Trade-marks Act and Regulations and informs you of requirements which are not met by the application.
  3. Publishes the application in the Trade-marks Journal, which is issued every Wednesday.
  4. Allows time for opposition (challenges) to the application. Anyone may, upon payment of $750, file a statement of opposition with the Registrar. After considering the evidence filed by either or both parties, the Registrar decides whether to refuse your application or reject the opposition. The parties are notified of the decision and reasons why.
  5. If no one files an opposition to your application, the mark is allowed. Upon payment of the $200 registration fee and the filing of a declaration of use in the case of a proposed use trade-mark application, your mark is registered.

How Long Does Registration Last?

Your registration is valid for 15 years, and you can renew the registration every 15 years thereafter upon payment of the $350 renewal fee (if submitted online or in any other case $400).

Foreign Registration

Registering your trade-mark with the Trade-marks Office protects your rights in Canada only. If you are selling wares or services in other countries, you should consider registration in each of those countries. Contact a trade-mark agent or the embassy of the country in question for information on foreign registration.

You can find the Trade Marks Guide going to this link:
www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/h_wr02360.html

Source: http://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/home

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