Trademarks
What is a Trademark?
A trademark is a word, logo, symbol or design that is used in association with specific goods or services in order to distinguish ones goods and services from others in the marketplace. As a trademark can come to represent the goodwill or reputation of the trademark owner, for many companies their trademarks are among their most valuable assets.
To what extent is a trademark protected?
A trademark registration gives its owner trademark rights across all of Canada, even when the trademark is only used in a limited geographical area. By contrast, at common law a trademark owners’ rights extend only to that specific area where the owner can prove a reputation or goodwill in respect of that trademark.
What specific protection is offered under the Act?
The owner of a registered trademark is given a number of statutory causes of action under the Trademarks Act, namely, an action for trademark infringement and an action for depreciation of the value of goodwill attaching to a registered trademark. At common Law, the only cause of action for a trademark owner is an action for passing off.
Does the trademark apply outside of Canada?
There is a priority rule in an international trademark agreement whereby an applicant for a trademark in Canada may rely on the Canadian filing date as its effective filing date in a foreign country, provided that the foreign application is filed within six months. This allows Canadian trademark applicants to skip ahead of other marks filed within that six month window in the foreign country.
What other advantages are there?
The existence of a trademark registration provides a complete defence to an action by another party for passing off where the registered trademark owner is using the registered mark in association with the wares and services which are the subject of registration.
Can the Trade Mark be sold?
Given the advantages of trademark registration referred to above, the value of your trademarks can increase substantially if they are registered rather than unregistered. This point becomes particularly significant when a business is being sold along with its trademarks, or where the trademarks are being licensed, or where the trademarks are used as security for a loan for the business.
What is the approximate cost of a Trade Mark?
The fees in the filing and following through to registration are approximately $1,000. The disbursements (government fees) are currently $2150 to file and another $200 to register.
Approximately how long does it take to register a Trade Mark?
The Trademarks Office is very slow, so it often takes between 12-16 months assuming no problems. However, the mere filing of an application establishes some rights and you do not need to wait for registration to commence use.
