Registering trademarks in Canada

Registering trademarks in Canada
What is a trademark?
A trademark is a form of intellectual property. A trademark may be one or more words, sounds, or designs. It includes both logos and slogans. It is used to distinguish the goods and services of one person or organization from those of another. It is distinct from other forms of intellectual property, such as a patent, copyright, or industrial design.

There are three types of trademarks: 
Ordinary mark

• Words, sounds, designs, or a combination of words, sounds, or designs
• Used to distinguish those goods or services from others

Certification Mark

• Purpose is to indicate that a certain good or service meets a specific standard
• May be licensed to multiple people or organizations

Distinguishing guise

• Shape of goods, shape of their containers, or ways of packaging or wrapping
• Used to show that a specific individual or organization has made the product 

What is a trade name?
A trade name and a trademark are different concepts. A trade name is the name of the business and it can only be registered if it is also used as a trademark. This means that the name of the business must be used to identify goods or services.  You should note that trade names are commonly used as trademarks even when they have not been registered as trademarks.
                  Difference between a registered and an unregistered trademark
The owner of a registered trademark acquires the sole right to use the trademark across Canada for a term of 15 years, and for additional 15-year terms, if the registration is renewed. This means that a registered trademark could be valid indefinitely, so long as the required renewal process is followed. A registered trademark is entered by the Registrar into the Register of Trademarks. The act of registration is direct evidence that the owner owns the trademark. This means that if a dispute arises, the burden to prove ownership falls on the individual challenging ownership. The registered owner does not have to prove they own the trademark.
                  Ownership over a trademark can also arise automatically at common law. This means that registration is not essential to protecting ownership over a trademark. At common law, the use of a trademark as a distinguishing mark for goods or services for a specific amount of time can provide a basis for ownership. However, if a dispute arises, both parties would be responsible for proving ownership (unless one of the parties was the registered owner). This may lead to a protracted and expensive legal battle. As a result, legal protection is strengthened with registration.
                  Enforcing a trademark
                  It is the responsibility of the trademark owner to enforce a trademark. Registration does not impact this responsibility. In order for a court to find that a trademark has been infringed, the trademark owner must demonstrate that confusion may be caused for the average consumer.    
                  What cannot be registered as a trademark
The following cannot be registered as a trademark:
Names/surnames

• An exception may apply if it can be proved that the goods or services are known to the public under that name or surname
• An exception may apply if the name or surname has another meaning

Clearly descriptive marks

• Describes a feature of the goods or services
• Examples: “sweet” for ice cream, “juicy” for apples, or “perfectly clean” for dry-cleaning services  

Deceptively misdescriptive marks

• Clearly misleading
• Example: “air express” for a ground transportation courier service

Words representing a geographical location commonly known to be the place of origin of goods/services

• Example: “Italy” for pasta
• In addition, you cannot register a word that would mislead the public into thinking the good or service comes from a particular location if that is not actually the case

Words in other languages

• Examples: “gelato” (ice cream in Italian), “anorak” (parka in Inuktitut), or “wurst” (sausage in German)

Words/designs that could be confused with a registered or pending trademark

• Examiners of a trademark application will consider whether:
  • The trademarks look or sound alike and whether they suggest similar ideas or meanings
  • The trademarks are used to market similar goods or services

Words/designs that look very similar to a prohibited mark

• Examples of prohibited marks:
  • Trademarks that are similar to official marks, such as official government designs (unless permission is obtained)
  • Obscene, scandalous, or immoral subject matter
  • Portraits or signatures of living individuals or individuals who have died within the last 30 years

Duration and cost of registration
The duration of a registered trademark is 15 years from the date of registration. A registered trademark can be renewed every 15 years for an additional term of 15 years. There is no limit on the number of permitted renewals.
At a minimum, the cost of registering a trademark will include a filing fee of $250 and a registration fee of $200. There may be additional fees associated with registering a trademark depending on the circumstances, in addition to any fees associated with using a professional trademark agent, if applicable.   
                  Steps to take before preparing a trademark application
You may wish to search the database of existing trademarks in Canada. This will help you determine if a similar trademark already exists. You may also wish to search trade names, but there is no central database of trade names in Canada. To do so, you may wish to engage a professional trademark agent. The trademark database does not include trade names (unless it is also a registered trademark).   
                  Process for filing a trademark application
You will need to prepare a trademark application package, which includes the application for registration form, a formal drawing (if necessary), and the filing fee. A separate application is required for each trademark.
                  A formal drawing is required if the trademark encompasses anything other than a word or a combination of words. The formal drawing must be black and white and include a description of any colour or colours that are featured in the trademark. You should note that, in order to retain your registered trademark, you cannot change the colour or colours you have described as being featured in the trademark in your application. Finally, if the design is detailed, the drawing should be as large as possible, but within the limits of 22cm x 35cm or 8.5 inches x 14 inches.   
                  Your application can be filed online or by mail. Once received, the application will be given a filing date, if it is complete. The filing date matters because it is the date used to assess entitlement to registration in the event that there are co-pending trademarks. The Registrar will then complete an examination, which entails: a search of the trademark records for any conflicts with pending or existing trademarks; an examination of the application to determine that it obeys the relevant laws and regulations; publishing of the application in the Trade-marks Journal to determine if there are any challenges to the application; and, if there are either no challenges or a challenge has been decided in the applicant’s favour, registration of the trademark. The processing time for an application ranges from several months to a few years.
                  Additional information
For more information, please visit the following websites:

• http://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/h_wr00002.html, or
• http://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/h_wr02360.html#whatAreTM.

Natalie Holtby is a 3rd year student at the University of Calgary's Faculty of Law.