In Canada, trademarks may be registered or unregistered. Trademark registration is governed by the federal Trade-Marks Act. The Trade-Marks Act establishes a regime under which applicants apply to have their trademarks registered into the Register of Trademarks, the record of all formally applied for and registered trademarks in Canada.
There are many reasons why registering your trademark is the prudent course of action for any business owner, regardless of whether you’re a new business owner or have been operating your business for many years.
Here are five key reasons to register your trademarks:
1. Protect value
Trademarks are valuable commodities for branding your business. Registering your trademark protects your intellectual property rights in your trademark, allowing you to safeguard and develop your brand. Registered trademarks are also valuable in that the bundle of rights they represent can be bought, sold, licensed or used to secure loans.
2. Ensure nation-wide protection
Registering your trademark provides you with Canada-wide protection, granting you the exclusive right to use the mark in Canada and creating a presumption of distinctiveness and goodwill unrestricted to your geographic location. Registering a trademark thus preserves your ability to expand, license or move your business. Conversely, unregistered trademarks are only protected in the regions where they are used and where they have established a sufficient reputation.
3. Establish long-lasting protection
Trademark registration is valid for 15 years. Once registered, trademarks can also be easily and indefinitely renewed upon payment of a renewal fee. No further documents need be filed after the initial registration.
4. Provide evidence of sole entitlement
Trademark registration provides you with direct evidence of ownership. While use of a trademark for a period of time can establish ownership under the common law, in the event of a dispute, both you and your opposing party must fight to establish your right to its usage, potentially resulting in lengthy and costly legal disputes. Registering your trademark helps avoids such problems. Registration in Canada’s Register of Trademarks serves as public notice of the trademark’s use; thus, you do not need to prove ownership, the onus lying upon the party challenging your usage. Furthermore, having a registered trademark is a defense to charges of ‘passing off’, thus providing you with a level of security in knowing that you are not infringing another party’s trademark and will not be forced to switch trademarks at a future date.
Trademark registration can deter other parties from using your trademark or devaluing your brand by using confusingly similar trademarks. While owners of unregistered trademarks can claim infringements through the common law doctrine of “passing off”, owners of unregistered trademarks must first establish that they have goodwill or a reputation through the use of their trademark, that the other party has misrepresented itself as those of the trademark owner in selling goods or services, and that the trademark owner’s reputation or goodwill will likely be damaged. Owners of registered trademarks have a prima facie claim and also may find broader remedies through the Trade-Mark Act for trademark infringements.
Nick Wright is a registered trade-mark agent. Contact us now to arrange a time to discuss protecting your business’ intellectual property.
This article and the contents herein are for informational purposes only and do not constitute legal advice. Readers are advised to seek legal counsel prior to acting on any matter discussed herein. I take no responsibility for any third-party sites linked, nor is the presence or absence of a link an indication of my endorsement of views expressed.