When starting a new business, or when your existing company is creating a new product that is distinguishable from other products of that company, or those of competing companies, you should select a brand name for that product and protect it by registering it as a trademark. Registration of a trademark gives you exclusive rights of use throughout Canada under the Trademarks Act (Canada) (the ‘Act’). Also, a trademark is a valuable intellectual property as it represents the company’s reputation.
Definition of a Trademark
A trademark is a word (or words), a design, or a combination of these, used to identify the goods or services of a person or a company and to distinguish these goods or services from those of others in the marketplace. A trademark is a valuable business asset. Registering a trademark should be part of a business strategy because it is an easy and effective way of investing in your business.
Selecting a Trademark
A trademark must be capable of distinguishing the product or service from other products or services in the marketplace. When selecting a trademark it is important to ensure that it is clearly distinctive and does not contain generic or suggestive terms. Suggestive terms merely signify the nature of the product or service, yet they do not allow for distinguishing your product from those of other companies in the marketplace. Therefore, in order to maximize the likelihood of registration, a trademark should be one that makes only oblique reference to the nature of the goods or services in relation to which it is to be used.
In general, a trademark will not be registered if it is a name or surname of a person, a word in another language that describes the nature of the product or services, an official symbol, or if it is descriptively mis-descriptive ( e.g., “ Trans Ground” in relation to air transportation services).
Benefits of Obtaining a Trademark
There are several advantages of registering a trademark in Canada. First, a trademark provides proof of ownership and exclusive rights across Canada for 15 years and may be renewed indefinitely. Even if the goods or services are not yet on the market, the owner may request the registration on the basis of intent to use. Second, it prevents others from using a similar trade-mark by allowing the owner to claim an infringement under the Trademarks Act. Also, registering a trademark allows the owner to protect the corporate identity in the event of a legal dispute.
Process of Obtaining a Trademark
You can register a trademark by entering it on the Trademarks Register of the Trademarks Office of the Canadian Intellectual Property Office of Industry Canada. The registration process usually takes about ten to twelve (10-12) months.
A trademark is registered by filing an application with the Trademarks Office together with a non-refundable application fee of two hundred and fifty dollars ($250.00). Each trademark requires a separate application.
Once the application is filed, the Trademark Office examiners will assess its clarity and whether it complies with the regulations and commercial terms. Following the assessment, the Trademark Office will submit the trademark for advertisement.
In the advertisement stage the trademark information will be published in the Trademark Journal. This is done in order to ensure that there are no conflicts of interest with regards to other companies who have a similar registered trademark. If the Trademark Office receives no opposition within a period of three (3) months, the Trademarks Office issues a notice of allowance of the application for registration.
In order to complete the registration process, the owner of a trademark must pay a registration fee of two hundred dollars ($200) within six (6) months of the receipt of the notice of allowance.
First, if the owner of a trademark intends to sell the product or services in another country, the trademark owner must apply for foreign trademark registration.
Second, although the registration process takes on average ten to twelve (10-12) months, in the event that another person or a company file an opposition, the process may be extended to eighteen (18) months.
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