A trade mark is a word, series of words, design, or some combination therof, used by a person to distinguish his goods or services from those of others. The strongest trade marks are those which have no suggestive connotation to the wares or services for which they are used, eg. Kodak® or Essso®.
Suggestive marks are often used for marketing reasons and, provided that they are not clearly descriptive or deceptively mis-descriptive of the nature or character of the wares, may be capable of trade mark protection. Thus the owner of the fan may decide to sell the fan under the possible names FANTASIA, or PHANTASIA.
A Trade Mark is any word, series of words, design or some combination thereof used by a person to distinguish his goods or services from those of others.
At Common Law, Trade Mark rights arise through use of your trade mark. This provides protection in the geographic area where the trade mark is used, e.g. Eastern Ontario.
Legal proceedings concerning possible infringement of your trade mark must take place in Provincial Court, and decisions are enforceable in that province only. In order to be successful, you must first establish that you have a protectable right.
Another party who applies to register his trade mark may not know of your prior use, and the Examiner will not cite your trade mark because it will not appear on his database.
A registered trade mark is one for which an application was made with the Trade Marks Office pursuant to the Trade Marks Act. Such a trade mark is registered for all of Canada.
Legal proceedings in respect of a registered trade mark are conducted in Federal Court and are enforceable throughout Canada. By virtue of you having a registered trade mark, it is considered to be prima facie valid.
Your registered trade mark will appear in all Trade Mark databases, and the Examiner should cite your trade mark against all confusingly similar trade marks.
To be registrable, the trade mark must not be clearly descriptive, or deceptively misdescriptive of the character or quality of the goods or services for which it is intended to be registered, e.g. COLD BREW for beer.
The trade mark must not be a prohibited mark under Section 9 of the Trade Marks Act. These include symbols, marks or logos of entities such as royalty, governments, the Red Cross, the United Nations, the RCMP, the Canadian Olympic Association and Universities.
In addition, your proposed trade mark can not be scandalous, obscene, or immoral; falsely suggest a connection with a living individual; or include the portrait or signature of a living individual or someone who has died within the last 30 years.
Trade Marks - A search of the Trade Mark Office records will determine whether there are any registered trade marks, or pending applications, which might be considered confusingly similar to your own. A more comprehensive search of Distinctive Character sources, Common Law sources, corporate name registries and Internet Domain Names may also be advisable.
Trade Marks - A trade mark owner has the right to use the trade mark in association with those goods or services for which it has been registered through-out Canada.
Trade Marks - 15 years from registration, renewable for further fifteen year periods. There is an on-going requirement that the trade mark be continually used while it is registered.
Intellectual Property rights are national in scope. This means that you must usually file a separate application for each country in which you wish to seek protection.
For Trade Marks, it is possible to file a single trade mark application for Europe under the European Community Trademark system.
You should seek protection for every country where you conduct business, or where your product will be sold. You may also wish to seek protection in those countries where your main competitors are located or countries where infringing products could be manufactured.
Normally, Canadian clients file for protection in Canada or the U.S.A. and consider filing additional applications within the convention priority period described below. A professional can advise you on the best filing strategy for your situation.
Corresponding applications can be filed in other countries and this decision is made based upon a number of factors including where potential markets or competitors are located, and the costs involved.
Canada is a signatory to a number of international agreements which state that a national of one country, individual or company, who has filed an application in his home country may then file a corresponding application in Canada and claim their original foreign filing date as their Canadian filing date. In return, Canadians receive the same benefits.
Example: This means that for patents you can file your Canadian application today and will be granted one year in which to file a corresponding application in a foreign country and use today's date as the date of your foreign application. For industrial designs and trade marks, the priority period is six months.
You have the option to file applications yourself or use a professional experienced in this area of the law.
Trade Marks - In Canada, there are two main groups practising in the trade mark field - trade mark agents, and lawyers specializing in trade marks who are also trade mark agents. Trade mark agents are individuals who have been employed for two years prosecuting trade mark applications under the supervision of a trade mark agent and who have passed a qualifying examination. Lawyers who pay a registration fee are entitled to practice as trade mark agents by virtue of their legal training. Industry Canada and the Patent and Trademark Institute of Canada maintain a list of all firms and individuals who are registered to practice as patent and trade mark agents. In addition many of these firms advertise under the 'Patent Agents - Registered' or 'Trade Mark Agents - Registered' section of the Yellow Pages. These firms can also advise you in respect of Copyright and Trade Secret issues.
Obtaining intellectual property protection can be an expensive process. You should review your financial resources as part of the development of an overall business plan.
Various avenues can be pursued for financing at different stages of development. Initially, innovators usually rely upon personal finances, family and friends, and personal loans. Other sources of funds may be available at later stages.
To give you some idea of the costs involved in seeking intellectual property protection, these are the applicable Canadian government fees:
Trade Marks - Application Fee $300.00 (Online $250.00); Registration Fee $200.00 Renewal fee $300.00.
The professional fees charged by patent and trade mark firms vary depending upon the complexity of the matter. You should discuss the question of fees with your professional.
Trade Marks - Both Common Law and Registered Trade Marks can be identified using the symbol ? along with the trade mark owner's name. The symbol ? may only be used if you have a registered trade mark. However, if your product is likely to enter the United States without a corresponding U.S. Trade Mark registration, then you should use only the ? symbol because of U.S. penalties for inappropriate use of the ? symbol in that country.
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The comments contained herein provide a brief overview only and should not be regarded or relied upon as legal advice or opinion.
01/2007