FAQ: Trade-Mark

  1. Why protect your trade-marks?
    Trade-Marks are an important asset for modern businesses. Proper protection is therefore crucial. There is no better protection for the name of your wares and services than a registered trade-mark. The main advantages of trade-mark registration in Canada:

    • Presumption as to trade-mark’s ownership – The registration certificate constitutes prima facie evidence of the facts set out therein. It is therefore a presumption as to the title as well as to the mark’s distinctive character.
    • Exclusive right to use the trade-mark throughout Canada – Registration confers the exclusive right to use the trade-mark in connection with goods and/or related services across Canada.
    • Incontestability after 5 years of registration – A trade-mark that has been registered for over five years is deemed to be incontestable, in that it cannot be expunged on the basis of prior use, unless bad faith is shown.
    • Citation by the Trade-Marks Registrar against subsequent trade-marks applications if confusion occurs – Examiners at the Trade-Marks Office must cite a registered mark against subsequent trade-mark applications, which they examine, for confusion with the one registered.
    • Lesser burden of proof in the course of an opposition proceeding – If the owner of a registered trade-mark files an opposition to a pending trade-mark, the applicant for same will have to overcome the initial burden of showing absence of likelihood of confusion between his mark and opponent’s registered mark.
    • Ease of foreign registration – Canada is a member of the Paris Convention. Hence, a Canadian registration entitles its owner to register same in any foreign country member of said Convention, without having to show use as is required in certain countries (ex: United States).
    • Advertising of the trade-mark toward third parties – The registered trade-mark will appear on almost all Canadian computerized data bases used for conducting availability searches for trade-marks or corporate names. These will discourage others from adopting a trade-mark that might cause confusion with yours.
    • Additional legal actions available – A registered trade-mark can form the basis of an action in infringement and other actions pursuant to the Trade-Marks Act, for which the burden of evidence is less than for an action in passing off or in unfair competition.
    • Legitimate the use of the symbols ® or MD – Even if there is no specific provision in Canada that imposes the use of legal notices, the Canadian consumers recognize the well-known symbols MD, ®, TM or MC. The registration of a trade-mark legitimizes the use of the symbols MD or ®, which serve as a notice that said trade-mark is registered, thus providing an inexpensive and efficient means of discouraging infringers.
  2. What is the difference between a trade-mark and a trade name?
    A trade-mark is used to distinguish the wares or services of a person from those of another person. A trade-name is the name under which a person does his business. A registered trade-mark in Canada gives its owner the exclusive right to the use throughout Canada whereas the trade-name is protected only where it is used depending of the circumstances.
  3. Why should you use our trade-mark services?
    Preparing a trade-mark application and tracking the process can be complex (the registration process can take a year or more). The consequences of filing a flawed application can be severe. Our team of trained professionals can help you avoid and overcome common and technical obstacles that may be encountered. You’ll save time and money.
  4. What kinds of trade-marks can be registered in Canada?
    It is possible to register an ordinary mark or a certification mark, including logos and slogans, or a distinguishing guise, unless the mark or the distinguishing guise conflicts with the Trade-mark Act.
  5. Does registration in Canada protect the owner’s rights in other countries?
    Canada has signed many treaties for international protection of intellectual property, but it is still necessary to file foreign applications in the country of interest.
  6. Am I entitled to use legal notices such as ®, TM, MC or MD?
    Even if there is no specific provision in Canada that imposes the use of legal notices, the advantages of doing so are highly recommended. The symbols ® and MD should be used only upon issuance of the certificate of registration. In the United States, the absence of legal notice could negatively affect granting of monetary recovery from an infringing third party.
  7. How long does a registration last?
    In Canada, the registration is valid for 15 years and is renewable every 15 years. In the United-States, the registration is now valid for 10 years and is renewable every 10 years. However, a statement of use must be filed in the United States between the fifth and sixth year following registration.