The owner of a registered mark is granted the
right to the exclusive use of his mark Canada-wide (country-wide) even if the mark
is not used throughout all of Canada. The owner of an unregistered
mark has protection, under civil law, within a confined geographic
area where he enjoys an established reputation and goodwill.
A registered mark enables the owner to take trade
mark infringement proceedings in either Provincial Court or in the
Federal Court of Canada.
Infringement is easier to demonstrate, than
Passing Off is to prove.
There is a serious risk that licensing will
damage or destroy the distinctiveness of unregistered marks. For
registered trademarks, the risk of loss of distinctiveness is
reduced by allowing the licensee to be registered as a
"Licensed User", ensuring that the owner can maintain a
suitable degree of control over the character and quality of goods
and services sold or performed by the licensees of the trade mark.
A registered trade mark may afford protection
against a non competitor; (S-23 of the Act prohibits the use of a
registered Trade Mark by anyone else "in a manner likely to
have the effect of depreciating the goodwill attached
thereto"), whereas an unregistered trade mark usually may be
asserted only against a competitor.
A registered Trade Mark becomes incontestable, in
most respects, five years after registration. The un-contestable
rule can operate to the serious disadvantage of a person who does
not diligently seek registration while he is "entitled" to
Many prudent people conduct trade mark searches
before they proceed with the introduction of a new product or
service. Once registered, a trade mark will be brought to the
attention of a potential user, thereby stopping any possible
infringement right from the source.
A trade mark registration usually
enables the owner of a mark to seek registration in a foreign
country, whereas registration in other countries may be denied if
the mark is not registered in Canada.
Corporate name searches (NUANS reports) are
required for all new Canadian incorporations. A registered mark will appear on the corporate name
search of the competitor. The courts are
aware of this fact and will refuse to accept the argument that an 'infringer' has done all things possible to insure he is not
infringing on the rights of a trade mark owner when he/she was required
to provide a NUANS report prior to filing his/her articles of