The Dos and Don’ts of Registered Trademarks
A registered trademark is a legal protection that gives a company the exclusive rights to use its mark for specific goods or services. It also provides a scope of protection that prevents others from using misleading or similar marks on comparable goods and services. This can be applied to various elements such as words, symbols, designs, packaging, and even sounds.
When it comes to trademarks, whether it is for a large IT company or a small local coffee shop, the significance of registering a trademark is the same. Here are some dos and don'ts to keep in mind.
Do: Understand the difference between registered and unregistered trademarks
A registered Canadian trademark refers to a trademark that has been entered successfully into the Canadian Intellectual Property Office’s Register of Trademarks.
Registration confers protection for 15 years throughout Canada with the option of repeatedly renewing for successive terms.
While it is not mandatory to register a trademark, it is often advantageous to do so. Registration provides a legal presumption of ownership, streamlining the resolution of any issues that arise with other companies, for example, if another company infringes a registered trademark by selling goods or services under a confusing mark. Registration of your mark can significantly minimize the hassle of dealing with protracted legal conflicts because it provides direct evidence that you own the trademark.
Moreover, registered trademarks provide a scope of protection that extends across Canada, rather than merely being confined to the geographical area within which an unregistered mark is used.
Don’t: Increase cost by filing for trademark registration without knowing what is acceptable
Generally, trademarks will not proceed to registration if they are:
Primarily comprised of a name or surname
Clearly descriptive (i.e. describe the character or quality of the goods and services of the company)
Deceptive (i.e. inaccurately describe the goods and services of the company)
Words for the company’s goods and services in another language (e.g. “gelato”)
Words or designs that are confusing with an existing trademark or a pending trademark or trademarks
Words that indicate a geographical location commonly known to be the place of origin of the respective goods and services
A trademark that looks very similar to a prohibited mark
Filing for a possibly unregistrable mark will likely result in additional legal fees, with no guarantee of securing registration.
You can find more information on the technicalities involved in trademark registration, including a list of registrable and unregistrable trademarks on the Canadian Intellectual Property Office’s website.
Do: Conduct a trademark search with an IP Law Professional before building your brand or filing for trademark protection
Conducting a trademark search before starting to use your mark (whether or not you register) can minimize the risk of having to rebrand. If you start using a trademark without knowing it is confusing with another company’s trademark, you risk having to rebrand later (as well as resulting in a possible lawsuit for trademark infringement!); this causes the marketing dollars you invested into your brand to become a sunk cost.
Further, a trademark search conducted by an IP Law Professional will help you assess the likelihood that your mark will be registrable, considering marks that have already been registered and business names. Proper trademark searching will make sure that your business steers clear of being confusing with others, helping to ensure an efficient path to registration, and avoiding future legal headaches.
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**The information provided herein is a general background of contractual, technology and intellectual property law concepts. It does not constitute legal advice, and should not be relied upon as legal advice. Athena Innovation & Legal, nor the author, make no express or implied representations or warranties in respect of the information, including but not limited to the accuracy of the information.**
