Did
you know that the only way to protect your business identity
and intellectual
property in Canada is to register a trademark?
1. “The granting of names under the Canada Business Corporations Act does not protect you from earlier or subsequent trade-marks of other parties.” 2. “You may wish to conduct your own NUANS searches on a periodic basis after your name has been approved. This would be done in order to ensure, to your own satisfaction, that no confusing corporate or business name has subsequently been approved in the jurisdiction(s) in which you are carrying on business, and to give you up to date information about trade-marks that have been applied for or registered subsequent to the granting of your corporate name.” 3. “Using a corporate name which is similar to a registered trade-mark may result in liability for infringement of the registered trade-mark even if the trade-mark was registered after the corporate name was granted. This is so because, under trade-marks law, the holder of a corporate name bears the responsibility of ensuring that no new trade-marks are registered which are confusing with that name.” 4. “Registration of a trade-mark is the best way to obtain the exclusive right to use the mark in all of Canada in association with the products and services for which the registration is obtained. While the Trade-Marks Office can provide basic guidance, it is recommended that a specialist be consulted.” |
Yes, it is a fact. Anyone in Canada can apply and register a trademark that may force you to change your corporate or business name. Think of the potential costs you may incur. Such costs like legal fees, changes to your marketing material, even simply changing your stationery, all cost money. What about a major inconvenience and loss of name recognition? Trademark infringement could be devastating for a small business.
If your business name, slogan, website, name of a product or service you provide is valuable to you, you must protect it. Simply placing a (™) mark beside the name offers you zero protection. You must have a registered trademark in order to get protection in Canada.
A one-time registration offers you 10 years of protection and you can always renew your registration for an additional term.
Register a trademark to protect your:
- Business Name
- Website Name - domain name
- Logo
- Name of your product or service
- Company Slogan
The
process starts with a Trademark Search. The cost is $39.95 plus GST.
You will receive a report that identifies all similar existing trademarks
to the one
you are proposing. This report will assist you in making a decision to
proceed
with registration or make amendments to the proposed trademark.
To order a Trademark Report click here.
If the proposed trademark is not used by anyone else, you can proceed with filing your trademark application.
Please note that Business Development Centre cannot provide you with legal advice or representation and will not be acting as your attorney or trademark agent. If you require legal advice, you have to speak to a lawyer.
Order
your free guide to Trademarks |
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Privacy Policy: Business Development Centre does not sell, rent or disclose names or information to any third party. We protect all records in accordance with strict requirements imposed by the Canadian government. |
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All information will be
provided free of charge and delivered via e-mail
in several chapters, one
chapter per day.
However, if you can't wait
to learn about trademarks in Canada, you can order
the entire Guide to Trademarks and download it right now for $9.95 plus
tax.
CHOOSING A WORD/PHRASE TRADEMARK
There
are some basic points to consider when choosing a word/phrase trademark.
Could your trademark be considered "clearly descriptive"?
The name cannot be clearly descriptive of the product or service with which
the trademark is to be associated. For instance, you would not be able
to register a word/phrase trademark such as "THE PRINT SHOP"
or "DIVORCE COUNSELLING CENTRE". If you add a distinctive element
to the name, it may be eligible for registration, provided that it does
not conflict with any previously registered trademarks. For instance "ED'S
PRINT SHOP" or "ED'S DIVORCE COUNSELLING CENTRE" may be
registered as long as there are no confusingly similar marks in the database.
*Using 'CANADIAN' or 'CANADA' as the only distinctive part of your name
will normally result in a clearly descriptive decision. For instance, CANADIAN
GOLF ACCESSORIES would almost certainly be rejected by an examiner on this
basis. The examiner would argue that the trademark clearly describes golf
accessories that originate in Canada. It is also preferable to avoid using
province names in this way as there is a possibility for a similar argument
from your examiner. City names, and region names (I.E. OKANOGAN, PEEL,
etc.) are normally alright, though it will be expected that the products
or services associated with the trademark originate in that city or region.
It is also not permitted to register a trademark that is deceptively misdescriptive.
For example, ABC CLEANING SERVICES filed in association with a candy company
could be considered deceptively misdescriptive.
Is your proposed trademark unique?
The more creative or unique the distinctive element of your name, the better
your chances are of avoiding conflict and the stronger your trademark will
be.
1) An invented word such as "XEROX" or "KLEENEX" is
the best type of trademark. Since nobody has used this name before you,
not only will there be a stronger association between the trademark and
your company, but you are less likely to face any conflict or opposition
during the application process.
2) A word used fancifully, for instance, "PHOENIX AUTOBODY",
is the next best. It is not completely made up, but nobody else is using
it in the same way that you are.
3) A combination of two existing words, I.E., "HELITOURS" or
"MEDICLEAN", may still be acceptable as the distinctive element
for your name, but could still be judged "clearly descriptive"
if it is too obvious.
4) The weakest kind of trademarks that are potentially acceptable are descriptive,
but not specifically descriptive, of the wares and services to be covered.
An example of this is "QUICK MELT" as a trademark for rock salt.
Again, you need to be very careful that your mark is not
"clearly descriptive".
How will you be using the name?
Please note that it is also possible to file a trademark for just the unique
element of your name. It is not mandatory to have a descriptive element.
This would give you a little more freedom with how you use the mark, but
can be more difficult to register in some cases.
LOGO TRADEMARKS
Logo
trademarks are examined based on their artistic elements, and the layout
of the image. When your mark is under examination, it will be compared
to other existing logos from both registered trademarks and trademark
applications. If there are too many artistic similarities to an existing
mark with comparable wares and services, you may not be able to register
your logo without some revisions.
It is possible to have text in your logo trademark, but that text will
not be explicitly protected and could result in a conflict if that text
is trademarked in association with similar wares and services. For protecting
text you need a word/phrase trademark.
Do not include the trademark symbol, "TM" or registered
trademark symbol, ® in your logo. These are not permitted.
Logo Requirements:
- Grayscale, 16 Shades of Gray (Black and White)
- Image file should end in .TIF or .TIFF (This refers to the type, or format, of the image file.)
- File size should be less than 1 MB
- Image density should be set at 300 DPI
The image resolution does not matter. As long as the file meets the above requirements, it should be fine.
Don't know
how to change the format of your logo?
If you are unable to reformat your logo to meet these specifications, we
can have it done for you, but a service fee of $35.00 + Tax would apply.
You may provide a file in BMP, JPG, TIF/TIFF, DOC or PDF format. There
are some other file types that we can support but please ask before sending
any type not listed.
After placing an order for a logo trademark, please email a copy of the logo to info@bdc-canada.com.
TRADEMARK PROCESS
Preparation
and Filing
During this preparation stage we do a search to determine if there are
any conflicts, and prepare a draft of the application for your review.
We only file the application after we receive a signed copy of that approval
form, confirming that you agree with the content of your application. Our
regular service speed for all packages is 5-7 business days from receipt
your order and payment, to filing. After the application is filed your
proposed trademark will appear in the Canadian Intellectual Property Office
(CIPO) trademarks database. There are rush service options available to
shorten the filing time by having your order prioritized.
Examination
After filing, your trademark will be assigned to a CIPO trademark examiner.
He or she will issue a report, usually 6-8 months after filing. This
report will contain either an approval notice, or information about
why your mark may not be registrable, instructions about how to correct
the issue, and a deadline by which you must respond. If you resolve
all issues mentioned in an examiners report, you will be sent an approval
notice. The Professional Package includes letters to your examiner
and revised applications when necessary. Most problems are easily corrected,
though it is possible for a mark to be unregistrable if there is a
major conflict with another trademark or if the mark is in violation
of the Trade-marks Act.
Publication
After a mark has been approved by the examiner, it is published in the
trademarks journal. At this stage it is possible for other trademark
holders to oppose your proposed mark if they feel that your trademark
is too similar to their own. You would typically use the services of
a trademark lawyer or trademark agent to deal with opposition. This
is the only type of support that is not included in our Professional
Package.
Allowance
and registration
If your trademark runs in the trademarks journal without being opposed,
your examiner will send an allowance notice. You would then pay the $200
registration fee directly to CIPO and your mark would be registered for
15 years before coming up for renewal. Allowance typically occurs anywhere
from 12-18 months after filing. At the time of registration, you will be
asked to provide a date of first use for any wares and services that were
initially filed as proposed uses. If you have proposed wares and services
that are not yet applicable, but you do not want to remove them from your
application, it is possible to request a time extension.
The ™ and ® marks have no legal significance in Canadian trademark
legislation. There are no Canadian repercussions to using these marks,
but you want to be careful if you are doing any business outside Canada.
The ™ symbol simply indicates that the associated word, phrase or image is a trade-mark. In the Unitied States, this symbol is used for unregistered trade-marks, whether or not they are in the process of becoming registered trade-marks. In the United States, the ® is reserved for registered trade-marks. If you sell into the United States, usage of the registered trademark symbol, ®, without a US trademark registration may prevent you from being able to register your mark there in the future. It is recommended that you not use the ® symbol unless you have your mark registered in the United States.
When to Use ™ Symbol in Canada?
This symbol has no legal significance in Canada, and its understood meaning
from US trademark law (™ = unregistered mark) means that it is relatively
safe. You can use it to identify your trademark without having to worry
about how it will be interpreted in other jurisdictions. The Canadian Trade-marks
Act does not regulate use of this symbol.
Canada's Trade-marks Act does not include any marking requirements. However,
the following symbols are commonly used by trade-mark owners to indicate
registration:
- R (registered)
- TM (trade-mark)
- SM (service mark)
- MC (marque de commerce)
