Simply stated; Trade Mark Law is not complicated. It is founded on two principals;
Trade Mark disputes are not complicated. They are decided on two sets of facts;
In this section we will look at what a trademark is, how it can benefit you, the advantages of registering, and how to go about it. Keep in mind that this guide offers general information only, and does not cover all the complex issues of trademark law. For exact definitions and details, consult the Trademark Act, the Trademark Rules, and decisions of the courts in specific cases. You can find these texts in many libraries. You can also buy a copy of the Act and Rules in any bookstore selling Federal government publications.
If you have questions not covered by the related
sections you may direct them to:
This chapter is divided into nine Sections
For the purpose of this guide we have used Canadian examples as we are a Canadian firm. However, the rules and procedures apply equally in all 142 countries that are members of the Geneva Convention. In other words, even though we have used Canadian examples we could also have used French, German or American examples.
Section One: Introduction to Trademarks
In this Section we will discuss.
Success, in today's business world, depends largely on the message you convey and project. You may have an excellent product or service to offer, but if people can't pick you out easily in the crowd, you will probably be overlooked in favour of a firm with a stronger presence.
It's no coincidence that certain brand names that dominated the North American market in the 1920s are still leaders today. The public gravitates towards familiar names and symbols that have become associated with quality and reliability. That's why companies spend millions of dollars nurturing their corporate images. They may research, design, market and protect a name, logo or package design as much as the physical product itself.
A key way of protecting a corporate identity is through
trademark registration. Registration of your trademark is legal title
in much the same way as a deed is title to a piece of real estate. It verifies
the exclusive right established through use of a word, symbol, style or
combination of these (a more complete definition follows under the heading
"What is a trademark?"). Whether you are just starting out on a business
venture or have been in the field for a long time, it pays to know about
trademarks. It's part of working strategically in a fast paced world.
Purpose of this Guide
We will look at what trademarks are, how they can benefit you and how to register one. With a basic knowledge of the trademark concept and process, you can take steps to protect yourself and avoid infringing the rights of others. This may help you steer clear of costly and time consuming legal battles.
Keep in mind that this site offers general information only and does not cover all the complex issues that may arise through the registration process. This guide is not a substitute for an experienced trademark agent. Nor does it provide authoritative definitions and explanations, for which the reader is asked to refer to the trademarks Act, the trademarks Regulations and decisions of the Trademarks Office Opposition Board and the courts. However, even if you hire a registered trademark agent, this guide can help you become a well informed client.
The Trade Marks Office (TMO) - Some 142 countries world wide have a Federal agency responsible for registering trademarks within that jurisdiction. In the majority of cases this office is also responsible for the registration other forms of intellectual property as well, namely; patents, copyrights, industrial designs and integrated circuit topographies. In Canada the central agency is called the Canadian Intellectual Property Office (CIPO). In the United States the central agency is called the United States Patent and Trademarks office (USPTO). We will refer to all such offices as the "TMO's"
The main functions of the TMO's are:
How much do Apple, IBM, Xerox and Nike spend protecting
their names? Probably enough to fund the R&D costs for the next two
generations of super computers. While some of this spending may be corporate
vanity, these companies, and others with well known trademarks, understand
the value of the names of their products. They know that backed by a sound
marketing strategy, a product's protected name can provide much of the
protection the product itself needs. If it is also protected in other ways,
so much the better, but a good name is an important marketing tool in and
of itself. Thus an important question becomes, how can you prevent a competitor
from using a product name so similar to yours that it might cause the public
to get mixed up and buy their product instead of yours? The answer to this
question comes in two parts. First you must pick a name which the courts
will protect. Second you must take specific steps to enhance this protection.
To show you how to successfully do both we must discuss the legal area
in some detail.
A trademark is any word, phrase, symbol, design, or any combination thereof, used to distinguish the products or services of one person or organization from those of others. trademarks come to represent not only actual products and services, but the reputation of the producer. As such, they are considered valuable intellectual properties and a key component of the goodwill of a business. A registered trademark can be protected through legal proceedings from misuse and imitation.
There are three basic categories of trademarks:
Ordinary Mark - Words or symbols that distinguish the products or services of a specific firm or individual from those of all others. Suppose you opened a courier business called "Giddyup." You could register the word as a trademark (assuming all legal requirements were met) for the service offered. You would then have the right, Canada wide, to the exclusive use of the word "Giddyup", in relation to transportation services. You may also have the right to the exclusive use of the phrase for other services as well.
Certification Mark - Developing and enforcing a defined standard for production of wares or services that are used by others who are authorized to produce products that meet that standard is a unique form of trademark registration. These are owned by one person, or entity, but licensed to others to identify wares or services which meet the standard. Examples are: the Wool Mark owned by The Wool Bureau of Canada, for use on clothing, and other wares or the logo of the Association of Professional Engineers.
Distinguishing Guise - Identifies the unique shape of a product or its package. If you manufactured candy moulded to took like butterflies, you might want to register the butterfly shape as a "distinguishing guise" trademark. Examples of a distinguishing guises include the unique shape of a coca cola bottle.
Other forms of intellectual property - People occasionally
confuse trademarks with copyright, industrial designs, patents and integrated
circuit topographies. These are rights granted for intellectual creativity
and are also forms of intellectual property. However, patents are for new
technologies (process, structure and function) and, in certain circumstances,
patent protection also may be available for computer software; copyright
is for literary, artistic, dramatic or musical works and computer software;
industrial designs are for the shape, pattern or ornamentation applied
to an industrially produced object; integrated circuit topographies refer
to the three dimensional configuration of the electronic circuits embodied
in integrated circuit products or layout designs.
A trade name is the name under which you conduct business, whether it be your own name, the name of a corporation, a partnership or a name adopted for a segment of that business, i.e. a division of a company. The trade name can be registered under the Trademarks Act only if it is also used as a trademark, that is, used to identify wares or services. For instance, let's say you own an ice cream business called A.B.C. Ltd.
Example 1 - People know your ice cream under the name A.B.C., because you use it as a trademark on or in association with ice cream. You can, therefore, register A.B.C. as a trademark.
Example 2 - People know your ice cream under the word promoted for example, "Blue Bell". Even though the official name of your company is A.B.C. Ltd., no one associates A.B.C. with ice cream. Therefore, A.B.C. cannot be considered a trademark unless you begin to use it as one.
Safeway Limited is a chain of retail grocers. They have registered Safeway as a trademark for their retailing services. The name of the ice cream they sell is Lucerne. Lucerne is a registered trademark for, among other things, ice cream.
As you'll see in more detail below, trademarks are primarily classified according to their "strength" (how distinctive they are as product identifiers). In addition, trademarks may also be classified by appearance (type, style, logo design, colour, and so forth). And although we tend to think of a trademark as a word or series of words such as Thunderscan or PostScript, there are also symbol marks such as the arm and hammer on baking soda boxes. In addition, there can be trademarks which are a combination of words and symbols such as the word "Apple" emerging from a rainbow with a bite removed for the products of Apple Computer. The label of a product as a whole, or the shape of the packaging, may also be a trademark.
In certain circumstances, a trademark registration may be declared invalid because of the prior use in Canada of a trade name which is similar to the registered mark. Ideally, you should conduct, or have conducted, a search of existing trade names before filing a trademark application. To do this he can consult a variety of sources including the NUANS (Newly Updated Automatic Name Search) database. A search of trade names or company names appearing in telephone directories from cities across Canada is also appropriate. To ensure a thorough search, it is best to hire a trademark agent to do the job.
Registered trademark vs. unregistered trademark - A registered trademark is one that is entered on the Trademark Registry. You are not required to register your trademark. Using a mark for a certain length of time can establish ownership through Common Law but registration is highly recommended. The only exception is precious metals. Your filing receipt is necessary if goods are to pass through customs. Registration of your trademark gives you the exclusive right to use the mark across Canada for 15 years, renewable in 15 year terms thereafter. In the USA trademarks are registered for 10 year terms. You will have to apply for foreign registration if you want protection in other countries.
Registration is direct (prima facie) evidence of your ownership and enables you to more easily protect your rights, should someone challenge them. In a dispute, the registered owner does not have to prove ownership; the onus is on the challenger. Use of an unregistered trademark can lead to a lengthy, expensive legal dispute over who has the right to use it. Keep in mind also that a registered trademark is a valuable asset for business expansion through licensing and franchises. Note as well that if you fail to use the mark for an extended period, your registration may be cancelled.
A business name, by itself, is not a trademark. However, Federal trademark laws does protect business names. If someone steals your business name (often referred to as your trade name) you can pursue the person under Federal Law.
But aren't there situations in which the same name is used as a product or service identifier and a business name? Yes, a great many. Apple Computer, Inc., for example, is not a trademark. But as we mentioned, the coloured apple, with the word Apple coming out of it, is. So is word "Apple" as used on Apple computers. Which raises an important point. If the name of your product or products is the same as your business and that name can be protected by trademark law (we discuss this below), you also gain an informal but often effective measure of protection for your business name. For example, if Elephant Motor Scooter, Inc. manufacturers the Elephant Motor Scooter and trademarks that name "Elephant" for use in association with motor scooters, then the name of the business is also protected.
What's the underlying logic behind trademark law? - Historically, the first user of a trademark on a specific line of goods or services owns the trademark and is thus entitled to keep others from using the same or similar mark in a context which is likely to mislead consumers. trademark law originally began as a body of law that kept one manufacturer from palming off his or her products as the products of another. In other words, it is designed to eliminate deception and unfair competition.
Consider this scenario: For the past five years you has been operating a highly successful ice cream emporium under the word "Blue Bell" in your home town in Nova Scotia. You have never heard of another Blue Bell and never bothered with trademark registration.
Meanwhile, an Ontario firm has registered the trademark
"Blue Bell" to identify its growing chain of spaghetti diners and home
brand tomato sauce. While conducting research for a Maritime expansion
plan, the Ontario firm discovers your store and serves you with a lawsuit.
Depending on the facts established with the Court, this may result in a
court order preventing you from using the word "Blue Bell." This development
could not have come at a worse time, since you were just planning to expand.
The situation could have been avoided if you had solidified clear rights
to the trademark through registration.
Preparing a trademark application and following through on it can be a complex task, particularly if a rival challenges your right to the mark. You may file on you own, but it is highly recommended that you hire a registered trademark agent to do so on your behalf. There are two kinds of registered agents: 1) lawyers or, in the Province of Quebec, notaries, who have paid the prescribed fee to register with the Trademarks Office; and 2) persons who have worked in the field of trademark applications for at least two years under the supervision of a registered trademark agent and have passed a rigorous qualifying examination in the field. Logic dictates that you should deal with the experienced individual and not with a lawyer who has done nothing more than pay the prescribed fees.
An experienced, competent trademark agent, who is well briefed, can save you problems caused by such obstacles as a poorly prepared application or inadequate research. If you intend to register marks in other countries, the use of a trademark agent is strongly recommended. The Trademarks Office can provide a list of registered agents, but cannot recommend any particular agent. Your local telephone directory is another source of agents' names. Part of the selection process should include the question, "how many trademark applications does the agent prepare each month?". Once you have appointed an agent, the Trademarks Office will correspond with no one else about this application. You may, however, change agents at any time.
Who can register a trademark? - Companies, individuals, partnerships, trade unions and lawful associations may obtain registration of their marks of identification for wares or services, provided they meet the requirements of the Trademarks Act and Regulations.
MAKING SURE your TRADEMARK CAN BE REGISTERED - your trademark will qualify for registration as long as it does not conflict with "The Trademarks Act", which sets out the requirements for registration. The following is a list of restrictions that prohibit registration of a mark in any country.
A trademark will not be registered if the trademark is primarily your full name or surname, or that of another individual (e.g. John Doe or Jane Smith, Wong, Cohen, etc.). An exception to this rule is if you can prove that the wares or services have become known under the name "Smith" or "Wong" or "Cohen," such that the word now connotes more than a persons name or surname in the public's mind. There are numerous examples of personal names that have become associated with a food, drink, or other product and are now registered trade marks. The prime example that comes to mind is McDonald's.
An another exception to this rule applies when the name or surname has meaning other than just as a name or surname, i.e. it is also a recognizable word. Suppose your last name were, in fact, "Brown." you could register the word for your ice cream business as long as there were no other reasons to disqualify it.
You may not register a word or phrase that clearly describes a feature of the wares or services. For example, " sweet" for ice cream, "juicy" for apples, or "perfectly clean" for dry cleaner services. All apples could be described as "juicy" and all ice cream as " sweet". These are inherent characteristics of the wares. If you were allowed to register these words, no other apple sellers or ice cream vendors could use them to promote their goods, which would be unfair. Again, if you can establish that "Sweet Ice Cream" has become so well known that people think of his product (and no one else's) when they hear the words, you might be able to register the trademark.
A further restriction applies when the mark, although not clearly descriptive, is thought to be clearly misleading, or in the words of the Act, "deceptively misdescriptive." For example, you could not register "sugar sweet" for candy sweetened with artificial sweetener, or "air express" for courier service that use ground transportation.
You may not register a word that clearly designates the place of origin of the wares or services, or that misleads the public into thinking that the wares came from a certain place, if they do not. Examples such as Paris Fashions, Atlantic Cod, Toronto Courier Service, B.C. Wines, or Danish Furniture could not be registered for those particular wares and services. Allowing you to use geographic locations as part of trademarks would be giving you a monopoly on a geographical term and be unfair to others. However, you conceivably could register the words "North Pole" for bananas, since no one would expect bananas to come from there.
Disclaimers - A disclaimer is a statement indicating that a certain word or portion of a trademark is not protected. In this way, you can use a generic word apart of a mark with the understanding that you have no monopoly over the word as used. For example, for Blue Bell Ice Cream, a disclaimer would cover the words "ice cream." A disclaimer may also be required of the word "blue". Having a disclaimer does not mean you can never use the disclaimed portion as part of a trademark. If, at a later date, you can demonstrate the disclaimed matter has become distinctive of the wares or services, then you may be able to register it.
Words that constitute the name of the wares or service in another language such as "Gelato", Italian for ice cream; "Anorak," Inuktitut for parka; or "Wurst," German for sausage could not be registered.
Beware of words, symbols, sounds and ideas that suggest someone else's trademark. If it is confusingly similar to a registered trademark or a pending mark, it will be refused. This prohibition makes sense when your client recalls that the whole point of registering a trademark is to protect his corporate identity from imitation or confusion with others.
Trademark examiners take into account various factors when determining whether trademarks are confusing. For example, they determine:
- whether the trademarks look or sound alike and
whether they suggest similar ideas; and
Let's go back to the example of "Blue Bell" Ice Cream. Suppose another company was manufacturing and selling frozen water products under the registered trademark "Red Bells." People might easily decide that "Blue Bell" and "Red Bells" products, are manufactured and sold by the same company. They might expect the trademarks to be owned by the same entity. Hence your application to register "Blue Bell" might be turned down on the grounds that there is a likelihood of confusing with the registered mark "Red Bells" owned by another company.
Other hypothetical examples of confusing trademarks
would be: "King Dog Food" vs. "King Cat Food" (two companies, two different
product lines, but the same trademark and the same general area pet food);
and "Glitter" mineral water vs. "Glittering" ginger ale. However, "Glitter"
for mineral water could probably coexist as a registered trademark with
"Glittering Dry Cleaners" as a registered trademark for dry cleaning services,
because the wares and services in this example are quite different.
USED TO DISTINGUISH
In this Section we will discuss.
A critical and often misunderstood element that an owner of a trademark must possess in order to secure and maintain registration is his ability to clearly demonstrate that the mark which is the subject of an application is in fact used to distinguish. In order for a mark to be used to distinguish it must be so prominently displayed on the products themselves that the ordinary consumer knows the product by its name and not the name of the manufacturer. "Lucerne" ice cream is a brand name known to every shopper of Safeway. The word Lucerne is prominently displayed on every package. In addition the package also contains a trademark symbol and a notation on the package the Lucerne is a registered trademark of Safeway.
The combination of the predominant presentation of
the mark coupled with the trademark symbol and the notation on the carton
as to ownership is the ideal method of servicing public notice of the use
of a mark. Public notice is evidence that the mark is used to distinguish.
All Trademark Act's list various kinds of marks that are expressly prohibited. You may not register a trademark that resembles certain official symbols unless you have the consent of the authority in question. By way of example, in Canada these symbols include;
- Official government symbols, e.g. the Canadian
These prohibitions are designed to prevent people from "cashing in" on the prestige and authority of the above mentioned institutions and misleading the public. The Trademarks Act also prohibits subject matter that is obscene or immoral. For example, your trademark may not include profane language, obscene visuals, racial slurs, or promote illegal substances.
Another prohibition covers the use of portraits or signatures of living persons or persons who have died within the preceding 30 years. For example, using the photo of an existing rock group to promote your record store would be prohibited unless you have formal consent.
You register a trademark by filing an application with the Trademarks Office. The application then goes through a stringent examination process to make sure that it meets all requirements of the Trademarks Act. Keep in mind that in all instances your trademark must be used in registration Country before it can be registered. While your application may be based on "proposed use" or "intent to use" you must actually commence to use the mark before registration will be granted.
There are three sets of fees you should be prepared to pay.
(1) Private search fees. Even though you can use the internet to
perform a number of searches on your own you would be well
advised to have a professional searcher complete a Full Common
Law" and to provide you with an option on the Registerability of your mark. (2) Federal government costs to
examine and register your mark. CIPO charges a fee of $350.00 and
the USPTO charges $325.00 per classification. Neither fee is
refundable. Therefore, get the opinion of a qualified agent prior
to filing the application. (3) In addition the fees of an agent
which very world wide..
When the TMO's receive your application, they do the following:
How Long Does Registration Last
In Canada your registration is valid for 15 years, and can be renewed every 15 years thereafter. In the USA your registration is valid for 10 years, and can be renewed every 10 years thereafter.
Foreign registration - Registering your trademark with CIPO protects your rights in Canada only. If you are selling wares or services in other countries, you should consider registration in each of those countries. Contact a trademark agent or the embassy of the country in question for information on foreign registration.
THE TRADEMARK REGISTRATION PROCESS
In this Section we will discuss.
The trademarks Office maintains a public inventory of all registered trademarks and pending applications. The Trademarks Office has also developed an electronic database of all marks and various companies are licensed to access the database. Before you apply for trademark registration, you or your agent should conduct a thorough search of these records to see if your trademark could be confused with someone else's. This step is not mandatory, but it is a good idea for two reasons: (1) It is a form of pre-screening. It will help you determine whether the application has a chance for success, or whether it would be a waste of time and money to try to register it in its present form. For example, your search may turn up a registered trademark "Red bells" for frozen water products, hence you would have trouble registering "Blue Bell" for ice cream. You might, at this stage, want to consider modifying the trademark to add or adopt more original words or artwork. (2) A search can help avoid trademark infringement and potential lawsuits.
You may personally visit the Trademarks Office, consult with one of the companies licensed to use the electronic database, hire a freelance trademark searcher or retain a registered trademark agent to do the research. Freelance searchers and trademark agents are listed in local telephone directory.
As of December 2001 the CIPO database contained listings of some 750,000 registered and 105,000 pending trademarks while the USPTO database contained listings of some 3,000,000 registered and 200,000 pending trademarks. Indexes cover word marks, slogans, numbers, pictures and combinations of these. As soon as your application is officially accepted, it too becomes part of the public record and is subject to inspection by other applicants.
To conduct a proper search, you will have to check for various possible versions of the mark. In the case of a word mark, look for all conceivable spellings. For example, if the trademark is "Blue Bell," search for all colours and all designs that would include bells.
Consider also having a search of trade names done before you go any further. Trade names, as discussed previously, are often also used as trademarks, even if they are not registered as such. Red Bells Inc. may never have filed for trademark registration, but if the name "Red Bells" is known for frozen water products, the company could argue it has ownership of the word as well as the trademark.
Red Bells Inc. could not prevent you from filing the "Blue Bell" application. The Trademarks Office would not have "Red Bells" on its trademark records, because trade names are not registered with it. However, Red Bells Inc. could easily find out about your application, either by doing a search of the Trademarks Office records or, when your application is published in the trademarks journal, it may then challenge his application during the stage called "Opposition."
As trade names may be recorded separately in each province under provincial legislation, there is no complete central inventory containing all current names, although through NUANS you can access a database of registered corporate names. This search is therefore quite complex and you would be well advised to hire a trademark agent to do the job.
It is not practical for individuals to attend the search room. Trademark searches prepared through a trademark agent are normally delivered next business day at a cost of less than $300.00. These reports contain an examination that is far more extensive than the search an individual might prepare. These searches normally examine areas of law that would also be of interest and contain an opinion of the agent. We strongly suggest you consult the phone directory and inquire as to prices.
The principal document in the registration process is your application form. A separate application for each trademark to be registered, although one application may cover both wares and services or a number of wares or services, must be filed.
You can create the form based on the 9 different formats. For your convenience, the two most commonly used formats, "in use" and "proposed for use", and instructions for filling them out, are included in Chapter 9.
Format 1 is an application for ordinary mark based on use in Canada. Use this form when you have been using the mark for a certain length of time and the claim is based on this fact.
Format 2 is an application for ordinary marks based on proposed use in Canada. This means that you state your intention to use the mark as described. Note. you must demonstrate "use" before registration can occur. You should consider waiting until the opposition period is over before commencing use of his mark.
If appropriate, you could combine the two formats, for example, if you have been offering a restaurant service under the name "Blue Bell" for several years and now plan to also sell "Blue Bell" ice cream, your application would be based on both "use for the services" and "proposed use for the wares."
Whichever format you must specify the trademark you are seeking to register. If the trademark is anything other than a word or words in block letters, then four drawings of the design are required at the time you file the application. The four formal drawings should: be in black and white; be on a piece of paper not exceeding 2 3/4 inches by 2 3/4 inches (7 cm by 7 cm); and include a description of the colours if colour is claimed in the trademark.
If you wish you may use the special chart in the Trademarks Regulations to indicate colours. Note, that including colour gives less flexibility as you must then always use the trademark in those specified colours. If you simply present the design in black and white, you will be free to use the mark in any colour. Likewise, presenting the word mark in any style of lettering other than plain capital letters restricts the use of the mark to that specific font or style. To maintain flexibility, present the word mark in plain capital letters and the design in black and white.
If your application is based on the current use of a design then three specimens of the mark as used should be submitted at the time of filing. The specimens can be labels, containers (flattened) or displays, showing the mark as it is actually being used. Remember, if these requirements are not met you may have to pay an additional $50 fee for completing the application.
To sum up, a complete application includes:
- the appropriate application form filled out by
you or your agent.
When your application arrives at the Trademarks Office, the office staff will check to make sure it is complete. If anything is missing, they will write to ask for comments or information. Once this process is finished, the office will acknowledge receipt of the completed application and assign a filing date, that is, the date that your application is officially filed. (Do not confuse this date with the registration date.) This filing date is particularly important for proposed use trademark applications, since it is the date the TMO's deem it to be the entitlement date of your trademark application.
After the formal filing you may make minor modifications. Major changes, however, would entail the trouble and expense of another filing. To avoid this take great care in preparing the application.
Search and Research
Trademarks Office staff conduct a thorough search of the records to verify that your trademark cannot be mistaken for anyone else's. They also conduct research to determine whether his mark fulfills all the criteria of the Trademarks Act, in other words, that it does not fall into any of the categories discussed in the section, "Making sure your trademark can be registered." The results are considered by the Trademarks examiner assigned to your case.
A critical element in the evaluation of your application is the comments of the examiner. The examiner studies the data and decides whether your application can be accepted. If there are questions, the examiner will notify the applicant in writing of the objections. You will be given an opportunity to respond. If your answers still fail to satisfy the examiner, you will receive a letter informing you that this application has been refused and the reasons why. In the event of refusal, you have the right to appeal to the Federal Court. We can not stress strongly enough the need to have examiners questions responded to by a knowledgeable agent. If you are questioned then consult with a trademark agent.
Disclaimers - The examiner may request that the applicant disclaim the right to the exclusive use, apart from the trademark, of a portion of the trademark.
Abandonment - If you fail to prosecute the application (take all the steps necessary to complete the process), the application may be considered abandoned. Before this happens, you will be notified and given an opportunity to remedy the situation within a specified time period. If the applicant decides not to respond, or does not respond appropriately, his application will be considered abandoned and he will have to reapply with the requisite fee to pursue the trademark.
Pre publication search - Let's suppose your application for the trademark "Blue Bell" has been approved for advertising in the Trademarks Journal. The Examiner could find no grounds to disqualify it. Does that mean registration is completed? No. There are still hurdles to overcome. The Office does another search, called a pre publication verification, to ensure that in the intervening months no one has registered or applied for registration of a trademark that conflicts with yours. The Office will again correspond with you if necessary seeking comments on any such trademark.
Advertisement - Suppose the Pre publication Verification has not unearthed any new objections for "Blue Bell." Now your application is ready for advertisement in the Trademarks Journal. This journal, published each Wednesday, contains details about every application which has been approved for advertisement. When an application is advertised, it allows members of the public an opportunity to raise objections to pending applications prior to registration. It is another means of weeding out trademarks that conflict with those of other owners. The Journal entry for "Blue Bell" is a summary of the information on the trademark and includes your name, address, file number, filing date, the trademark (the word mark, symbols, etc.), whether it is based on "use" or "proposed use", which goods and services it is used for and any other claims (colour claims, disclaimers, etc.).
Any person with valid grounds for doing so may oppose a trademark as advertised in the trademarks Journal. An opposition must be made within two months of the publication date by either filing a statement of opposition together with a fee of $250, or by requesting an extension of time to oppose, with a fee of $50. The Trademarks Office will dismiss an opposition it considers to be frivolous.
If your application is opposed and you have not retained a trademark agent then, at this point, you would be well advised to do so. The same holds true if you wish to oppose someone else's application. Opposition is a complex adversarial process, much like a court proceeding, during which both parties may file evidence and counter arguments, cross-examine the evidence of the other party and make representations at an oral hearing. The whole procedure can take as long as two to four years, sometimes longer. After a final decision is rendered, it may be appealed to the Federal Court of Canada. Because opposition proceedings can absorb so much time and money, you are advised to choose a trademark agent carefully. Seek someone who has proven expertise in the field.
Allowance and Registration
If there is no opposition, or if an opposition has been
decided in your favour, the application is allowed. The Trademarks Office
will not consider any further challenges. You will receive a Notice of
Allowance and be asked to pay the $200 registration fee. If the application
has been based on "proposed use," you will be asked for a declaration stating
you have commenced the use of the trademark. The final step, after you
have fulfilled these requirements, is for the TMO to issue a Certificate
of Registration and enter the registration on its records.
In this Section we will discuss.
A trademark is property. You can sell, bequeath or otherwise transfer rights to it to another party through a transaction called an "assignment. Although not required, you should formally notify the Trademarks Office of such changes in ownership so that the Office can amend its records accordingly. This is done to avoid ownership disputes.
There are no prescribed forms for notifying the Trademarks Office of an assignment, but you must send in a legal document attesting to the change, together with the prescribed fee. The original instrument of transfer, or a notarized copy, should be used. Other transactions, a change of name, a merger, etc., can also affect the ownership of a trademark.
Canada's trademarks Act does not contain any marking requirements. The US Trademarks Act does. However, trademark owners often indicate their registration through certain symbols, namely, R in a circle (registered), TM (trademark) or MC (marqtiede commerce). Although the Act does not require the use of these symbols, it is advisable to use them. The symbol TM or MC may be used regardless of whether the trademark is registered. The R in a circle, on the other hand, should be used only if the mark is registered in the USA.
Canada's Precious Metals Marking Act states that you must file a trademark application for the trademark used on the wares, if you wish to stamp a quality mark (e.g. 10 K gold) on the item. The quality mark itself is not mandatory.
Policing your Trademark
One of the functions of the Trademarks Office is to prevent anyone else from registering a mark that is the same as or confusingly similar to your mark. It does not, however, keep an eye out for cases of infringement. It is your responsibility entirely, to monitor the marketplace and, if you find someone using your registered trademark or a mark or a trade name that is confusing with the mark, to take legal action. Someone who infringes on trademark rights may be accountable to you by way of an injunction, i.e. an order to cease the infringing activity and / or damages.
Preventing imitation by competitors is not the only reason to police your mark. If your business is a success, the mark may be in danger of becoming a generic term. Believe it or not, too much familiarity can be a bad thing. Once consumers start saying "Blue Bell" when they mean any ice cream, your trademark is no longer distinguishable from others. Such was the fate of trademarks such as "Zipper," " Escalator," "Cellophane," and "Dry Ice." Who remembers that the correct terms were "slide fastener" and "moving staircase"? This is why some companies are very vigilant about policing their marks, and preventing improper use of their trademarks in any kind of communication.
Before using someone's trademark in communications, you must acknowledge the ownership and receive permission.
The following presents the most common Canadian fees. They have not changed since July 1, 1985.
On the filing of:
- An application far registration of a trademark:
Format of the Application
PLEASE NOTE the trademarks office does not supply forms. It is the responsibility of the applicant to follow the appropriate format and structure their own form. Samples of the applications are included in Chapter 9.
(A) (i) In the case of a corporation, give full name.
(ii) In the case of an individual, give the surname and at least one given name. If the individual trades under a name other than his own name, follow his name by the words "trading as" then give the trading name.
(iii) In the case of a partnership, give the surname and least one given name for each partner. Follow these names with either the words "a partnership" or the words "trading as" and then give the name under which the partnership trades.
(B) Every address is required to be furnished shall be a complete post office address and should include a street name, number and a postal code where one exists.
(C) (i) If the trademark is a word or words not depicted in a special form, omit the phrase in brackets referring to a drawing and set out the word or words in all capital letters.
(ii) In the case of a design trademark insert the phrase referring to the drawing and attach the drawing securely to the form in this space, e.g. by gluing or stapling.
(D) If all the specific wares in association with which the trademark has been used in Canada, and in respect of which registration is requested, fall into a single general class, list them all here. If such wares fall into more than one general class, list here only those falling into one class. The wares must be described in ordinary commercial terms.
(E) Give the earliest date when the applicant began to use the trademark in Canada in association with any of the wares listed in accordance with (D).
(F) List here the specific wares in accordance with which the trademark has been used in Canada, and in respect of which registration is requested, which fall into a different general class from that comprising the wares listed in accordance with note (D).
(G) Give the earliest date when the applicant began to use the trademark in Canada in association with any of the wares listed in accordance with note (F).
(H) If the trademark has been used in Canada in association with the specific wares falling into further different general classes, repeat here the words " and in association with the general class of wares comprising the following specific wares.......... since............ as often as necessary, listing in each case the specific wares falling into the different general class from those comprising the previously listed, and giving, in each case, the earliest date when the Applicant began to use the trademark in Canada in association with any of such wares.
(1) If all the specific services in association with which the trademark has been used in Canada, and in respect of which registration is requested, fall into a single general class, list them all here. If such services fall into more than one general class, list here only those falling into one general class. The services must be described in ordinary commercial terms. Give the earliest date when the applicant began to use the trademark in Canada in association with any of the services listed in accordance with note (1).
(K) List here the specific services in accordance with which the trademark has been used in Canada, and in respect of which registration is requested, which fall into a different general class from that comprising the services listed in accordance with note (1).
(L) Give the earliest date when the applicant began to use the trademark in Canada in association with any of the services listed in accordance with note (K).
(M) If the trademark has been used in Canada in association with specific services falling into further different general classes, repeat here the words "and in association with the general class of services comprising the following specific services .......... since ............ as often as necessary, listing in each case the specific services falling into the different general class from those comprising the previously listed, and giving in each case the earliest date when the applicant began to use the trademark in Canada in association with any such services.
(N) Insert "wares", " services" or "wares and services" as applicable.
10) Specify the place of execution. If the applicant is a corporation having a corporate seal, such seal should be affixed.
(P) The name and the position of a signing officer within a company should be identified below his or her signature.
(Q) The telephone number and area code are also requested.
PROPER USE OF A MARK
In this section we will discuss.
How to Serve Public Notice of Ownership
When a business man displays the TM symbol after his mark, he is saying to the world, "This is my mark." At the bottom of the page or label that the symbol appeared on, he prints "TM property of NAME". This is public notice.
Public companies must, as part of their annual report to shareholders, use a page at the back of the report to reproduce all the marks that belong to the corporation with a disclaimer that all such marks are the property of the corporation. Every sub-company of the corporation should be listed with a disclaimer that such subs are licensed to use the marks of the corporation. Again this is public notice.
How to Use a Mark to Distinguish
The Act says that a mark, in order to be qualified to be a mark, must distinguish the wares and services of one trader from those of another. Many businesses use a stylized version of their corporate name. The style appears everywhere. This stylized version also includes the legal element. To use the stylized version of a corporate name as a trademark simply remove the legal element from the style and include the full corporate name, address phone, fax, etc., in smaller print, block capital letters, some place else on the page where the style appears. Here is the rule: When a corporation uses a stylized version of its name, without the legal element, then the corporate name must also appear as block capital letters, across the bottom of the page, always above the address and phone or fax number. Presentation in this manner is also public notice. The notice must be a smaller size than all other print and appear as a notice separate and apart from the balance of the text. The following further illustrates the proper use of marks to distinguish.
- Logos - In order to be used as marks they must not be part of a corporate name. The logo must stand bold and apart from the corporate name as a prominent feature of the forum in which it appears. When a logo is used on souvenirs and novelties such as hats or t-shirts a one word product name should always appear with it.
- News letters - Every printed story, articles, or description of the product to which the mark is associated should highlight the mark be printing it in larger size text or a different colour, followed by the TM symbol.
- Literature - Again the mark should be printed it in larger size text or a different colour, followed by the TM symbol. At the bottom of the page you has the notation, "To place an order call", and list the corporations name, address, phone and fax.
- Invoices, Statements of Bills of Fair - Display the mark in larger size text or a different colour, followed by the TM symbol. At the bottom of the page you has the notation, "Make cheques payable to" and list the corporations name, address, phone and fax.
- Yellow Page Advertising - Display the mark in larger size text or a different colour, followed by the TM symbol. At the bottom of the ad you has the notation, "Call or Write us at" and list the corporations name, address, phone and fax.
These examples serve to illustrate that these marks
distinguish the products of services of these corporations from not only
other traders but also from the corporation. Therefore, every use of the
mark is use in association with both the corporation name and its products
PROOF OF OWNERSHIP
In this section we will discuss.
Evidence of First Use
It is critical that every business owner retain proof of the date that he used his unregistered marks for the first time. A trade name registration or a certificate of incorporation is not proof of first use. The business owner will want to retain as many of the following as he can.
- To demonstrate business start-up - A copy of his
first phone bill, lease, business license, bank deposit slip, cash register
WARNING your failure to use a registered mark correctly can, and usually does, result in the mark being expunged on the grounds that it is no longer a trademark that distinguishes. The best two examples of these are escalator and thermos. These two marks were once registered, however, the owners not only stopped using them to distinguish, they also allowed competitors to use these words as nouns. Bell Canada had several of its marks, including Watts, InWatts & OutWatts, expunged for not using them correctly.
Who Should Apply for trademark Protection
The following types of businesses should consider registering portions of their corporate name, trade name, or product names as trademarks. When considering trademark candidates it should be remembered that 70% of all registered marks are "words", 20% are stylized words, while only 10% are pure designs. The following examples address the need to register "words" as this is the largest neglected area.
KNOWN AS: - Those companies or individuals who carry on business under one name but are known to their customers by a shortened version of their name or another name altogether. The goodwill attached to the company is therefore transmitted through the KNOWN AS name. A good example is International Business Machines who are KNOWN AS IBM. IBM is a registered trademark.
BRAND NAMES: - When products are sold by the brand name on the package and not by the supplier's or manufacturer's name. We all go to the store to purchase "Kleenex". We do not go to the store and look for a tissue as supplied by Kimberly Clark Limited. The brand name is therefore significant as the goodwill of the manufacturer is known through the goodwill of the product. These brand names should be registered.
FRANCHISERS: - Every business that offers a franchise is a prime candidate for trademark registration. The owner of a mark has the right to register, and cancel, others as Licensed Users of his mark. A dispute between a Franchisee and Franchiser may drag through the courts for months, even years, whereas, the owner of the mark needs only give thirty days written notice of his intent to cancel the Licensed User agreements. If the User continues to use the marks after the right has been cancelled the owner can secure a court order to remove all items that bear the mark including, but not limited to, stationery, signs, inventory, invoices, etc. The owner of the marks associated with a Franchise has a powerful tool in dealing with his franchisees.
LICENSORS: - The principles that apply to Franchisers apply to Licensors. When the product is manufactured or supplied by another company whose reputation is not on the line when the product is sold, it is important that product quality controls be maintained. trademark registration and the use of a Licensed User agreement will provide this protection.
IMPORTERS: - Companies that take the time to source and secure the Canadian marketing rights to a product that have never been sold or made known in Canada must spend money to promote the BRAND NAME as used abroad and generate goodwill in Canada for this new product. These importers should protect their investment in the goodwill associated with the product. The importer is also protected against the exporter deciding to sell his products direct.
EXPORTERS: - Well over 150 foreign countries allow marks that are registered in Canada to be registered abroad. Once your client's marks are registered he will have protection against foreign exporters who wish to penetrate his markets by producing a competitive product in a foreign country. Customs officials can deny the admission of any product into a country that may infringe on the rights of a trademark owner. you also protects himself against the importer who decides to have his product made by someone else once the importer registers his name in that foreign country.
ASSOCIATIONS: - Many business organizations, unions, and Professional Associations have established a set of standards by which their members are obligated to maintain. Such associations pride themselves on their standards and encourage members of the public to deal with association members. The names of the associations may not be register-able as trademarks but the logos certainly are. These logos are register-able as Certification marks as they denote a standard of excellence that the member users of the association must meet in order to maintain their membership.
ESTABLISHED BUSINESS: - Businesses that have established goodwill in a community, due to length of time in business, multiple locations within a community or businesses that are operating or planning to locate in another community should consider trademark registration. When businesses start to experience success and decide to expand, they become a prime candidate for the thief who wants to steal their marketing ideas and promote a similar business in another community.
SERVICE COMPANIES: - This most often overlooked area is the one that needs the most protection. Companies that offer only services such as restaurants, construction companies, home builders, machine shops, trucking companies, consultants, etc. are often the most vulnerable as they do not have a product to protect but do have a service reputation that must be protected. This group of companies is represented by more than half of the businesses listed in any yellow pages, yet collectively they have less than 3% of all marks registered.
ENTERTAINERS: - The stage names used by entertainers, their signatures, and their caricatures are all prime candidates for trademark protection. Once the public starts to recognize an entertainer by the stage name, or once the public starts to purchase marketed wares or services of the entertainer then such entertainer should have protection.
Authors or publishers of printed
articles, magazines, or software, with a changing circulation, should
trademark the name of their written works.
ADVANTAGES TO TRADEMARK REGISTRATION
There are at least nine prime advantages to registering a Trademark.
ONE - The owner of a registered mark is granted the right to the exclusive use of his mark country wide even though the mark is not used throughout all of the Country. The owner of an unregistered mark has protection, under civil law, within a confined geographic area where he enjoys an established reputation and goodwill.
TWO - A registered mark enables the owner to take trademark infringement proceedings in either Provincial Superior Court or in the Federal Court of Canada.
THREE - Infringement is easier to demonstrate than passing off is to prove.
FOUR - 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 trademark.
FIVE - A registered trademark may afford protection against a non competitor; (S-23 of the Act prohibits the use of a registered trademark by anyone else "in a manner likely to have the effect of depreciating the goodwill attached thereto"), whereas an unregistered trademark usually may be asserted only against a competitor.
SIX - A registered trademark becomes incontestable, in most respects, five years after registration. The incontestability rule can operate to the serious disadvantage of a person who does not diligently seek registration while he is "entitled" to do so.
SEVEN - Many prudent persons conduct trademark searches before they proceed with the introduction of a new product or service. Once registered a trademark will be brought to the attention of a potential user.
EIGHT - A Canadian trademark 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.
NINE - Corporate name searches (NUANS reports) are
required for all new incorporation's. These reports present trademark
related information on all proposed names. 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
trademark owner when he was required to provide a NUANS report with his incorporation.
A registered mark will appear on competitors name search.
COMMON QUESTIONS ABOUT TRADEMARKS
What is a trademark?
A trademark is a word, symbol or design, or a combination of these, used to distinguish the goods or services of one person or organization from those of others in the marketplace.
Are there different kinds of trademarks?
Yes, there are three basic types. Ordinary marks are words and/or symbols that distinguish the goods or services of a specific firm. Certification marks identify goods or services which meet a defined standard set by a governing organization. Distinguishing guise identifies the unique shape of a product or its package.
What is the difference between trademarks and other forms of intellectual property?
Trademarks are only one form of intellectual property that can be protected through federal legislation. The other forms are: patents, for new technologies; copyrights, for literary, artistic, dramatic or musical works or computer software; industrial designs, for the shape, pattern, or ornamentation applied to an industrially produced object; and integrated circuit topographies, for the three dimensional configuration of the electronic circuits embodied in integrated circuit products or layout designs.
What is the difference between a registered and an unregistered trademark?
A registered trademark has been approved and entered on the Trademark Register held by the Canadian Trademarks Office. Registration is proof of ownership. An unregistered trademark may also be recognized through Common Law as the property of the owner, depending on the circumstances.
Why register a trademark?
Registration is direct (prima facie) evidence of exclusive ownership across Canada and helps ward off potential infringers. It enables you to more easily protect his rights should someone challenge them since the onus is on the challenger to prove rights in any dispute. The process of registration, with its thorough checks for conflicting trademarks, will ensure that you is claiming a unique mark, and help him avoid infringement of other parties' rights. A registered trademark is a prerequisite for franchising a business.
Is registration mandatory?
No, but it is advisable.
Why hire a trademark agent?
Trademark registration can be a complex process; an experienced agent can save you time and money by avoiding pitfalls such as poorly prepared applications and improper research.
Who can register a trademark?
Companies, individuals, partnerships, trade unions or lawful associations, provided they meet the requirements of the trademarks Act.
How long is registration effective?
Registration is valid for 15 years and is renewable every 15 years afterwards upon payment of a fee.
How do I register a trademark?
You must file an application with the Trademarks Office in Hull, Quebec. The application undergoes stringent examination to ensure it meets the requirements of the Trademarks Act.
Does registration in Canada protect my rights in other countries?
No. If your products are sold in other countries, he should consider applying for foreign registration. Contact a trademark agent or the embassy of the country in question to find out about procedures.
What is the difference between a trademark and a trade name?
A trade name is the name under which you conduct his business. It can be registered as a trademark, but only if it is used as such, that is, used to identify wares or services.
May I register my own name as a trademark?
Normally, you may not register a proper name neither his, nor anyone else's as a trademark. An exception may be made if you can demonstrate that the name has become identified in the public mind with certain wares or services.
What other kinds of marks may not be registered?
In general, marks that may not be registered are: words that are clearly descriptive (e.g. "delicious" ice cream), terms that are misleading, words that designate a place of origin (e.g. "Atlantic" cod), terms or symbols that are too similar to an existing trademark, and terms and symbols that are expressly prohibited under the Trademarks Act. These latter include symbols (coats of arms, badges, crests, etc.) of national and international organizations and terms that are considered immoral or offensive.
What are the steps of trademark registration?
Trademark registration usually involves: a preliminary search (done by you or his agent) of existing trademarks; an application; examination of your application by the Trademarks Office; publishing of the application in the Trademarks, Journal; time for opposition to the application; and allowance and registration (if there is no opposition).
Why is the preliminary search important?
It helps you determine whether his application has a chance for success. It helps him avoid infringing on other people's trademarks.
Will the Trademarks Office tell me during my preliminary search if my trademark can be registered?
No, the Office cannot provide a judgment at this stage. This can only happen during the examination process. Officials will give you general information about the rules and regulations.
What do I need to include in my application?
May I allow other parties to use my registered trademark?
Yes. You may sell, bequeath or otherwise transfer his rights to a trademark through process called assignments. He may also license rights to his trademark.
Will the Trademarks Office ensure that my trademark is not infringed?
The Trademarks Office does not act as an enforcement agency. Your client is responsible for monitoring the market place for cases of infringement and taking legal action, if necessary.
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