A trademark is a word, series of words, design, or some combination thereof, used by a person to distinguish his goods or services from those of others. The strongest trademarks are those which have no inherent meaning, and in particular, no meaning in relation to the goods or services with which they are associated, e.g. Kodak™ or Esso™.
What are the main differences between common law trademarks and registered trademarks?
Trademarks are protected at common law in the geographic area where they are used, e.g. Eastern Ontario. Registered trademarks, on the other hand, are registered under the Trademarks Act, and are registered for all of Canada.
Legal proceedings in respect of a registered trademark are conducted in Federal Court and are enforceable throughout Canada. By virtue of you having a registered trademark, it is considered to be prima facie valid. Your registered trademark will appear in all Trademark databases, and the Examiner should cite your trademark against all confusingly similar trademarks.
Are all trademarks registrable?
No. In order to be registrable, trademarks should not be either clearly descriptive, or deceptively misdescriptive, of the character or quality of the goods or services in association with which they are used or proposed to be used, e.g. COLD BREW for beer. There are other prohibitions.
Term of protection
The term of trademark protection in Canada is fifteen years from the date of registration. There is an on-going requirement that the trademark be continually used while it is registered. Trademarks may be renewed for additional fifteen year periods upon payment of a government fee.
Where should I file?
If you conduct business in Canada or the United States, you should file a trademark application in each country. Applications can be filed in other countries, and usually this decision is based upon where potential markets or competitors are located and the costs involved.
The value of searches
We recommend that we conduct a search of the Canadian Trademark Register, Distinctive Character sources, Common Law sources, corporate name registries and Internet Domain Names to determine whether there are any existing trademarks which may be considered confusing with your own trademark.