Six Common Mistakes Under Canadian Trade-mark Law

As more and more companies are seeking to distinguish their products and services in the marketplace by registering their names, slogans or designs as trade-marks, many companies which do not retain a Canadian lawyer or trade-mark agent often make fundamental mistakes. Among the most common mistakes are the following.
1. A Company Name is not a Trade-mark.
A company name is the legal name under which a company carries on business. However, unless the company name is used as a trade-mark, it cannot be registered under the Canadian Trade-marks Act. For example:
• Acme Insurance Ltd. markets life insurance under “Goodlife Insurance”. “Acme Insurance Ltd.” is the company name, “GoodLife Insurance” the trade-mark. “Acme Insurance Ltd.” is not used as a trade-mark, “GoodLife Insurance” is.
• Acme Insurance Ltd. markets life insurance under “Acme Life”. “Acme” is part of its company name, but it is also used as a trade-mark to distinguish its insurance policies from those of other insurance providers.
The important point here is that the registration of a company and the registration a trade-mark are two distinct processes. Federal and provincial company offices do not search the Trade-marks Office database to determine if a proposed company name is a registered trade-mark; nor does the Trade-marks Office search federal and provincial company offices to determine if a proposed trade-mark is registered as a company name. The two processes are unrelated, and the trade-mark must be registered separately.
2. There’s no Requirement to use a Trade-mark before Registering.
Many companies believe that they must commence use of their trade-mark before registering it. In Canada, as in many other countries, trade-marks may be filed on the basis of “intention to use”. An application which is filed on this basis must specify the products and services that the company intends to use in association with the trade-mark. Once the application has been filed, the company generally has three (3) years from the date of filing to file a Declaration of Use confirming the use of the trade-mark in association with the specified wares and services. The Declaration of Use may be filed anytime within the three (3) year period, but must not include any products and services that have not been used in association with the trade-mark.
3. Search before Using a Trade-mark.
It is always advisable to conduct a trade-mark search before commencing use of a trade-mark. This will ensure that the trade-mark does not infringe another trade-mark and will avoid the wasted expense of such things as advertising and labeling.
A trade-mark search may be conducted through the Canadian Intellectual Property Office Trade-marks database by inserting the trade-mark in the search text box and selecting the appropriate search field. If the search does not reveal an exact match, a secondary search should be conducted based on such factors as the elements of the trade-mark (where, for example, the trade-mark comprises more than one word), different spellings of the word(s) comprising the trade-mark and the sound of the trade-mark. This is referred to as a “comprehensive search” and is advisable to ensure that the trade-mark is not confusing with a registered trade-mark and therefore unregistrable.
4. Some Trade-marks are not Registrable.
Not all trade-marks are registrable. Among the trade-marks that are not registrable under the Canadian Trade-marks Act are:
• trade-marks that are clearly descriptive of the character or quality of the products or services,
• trade-marks that are deceptively misdescriptive of the character or quality of the products or services,
• trade-marks that are clearly descriptive or deceptively misdescriptive of the origin of the products or services,
• trade-marks that are the name of the products or services, and
• trade-marks that are confusing with a registered trade-mark.
There are a number of tests which have been developed by the courts which are employed by the Trade-marks Office in determining whether a trade-mark is registrable. In general terms, however, where an application for registration of a trade-mark falls within one of these categories, the trade-mark will not be registrable.
5. International Classifications Don’t Apply.
Products and services which are used in association with a trade-mark must be described in ordinary commercial terms. In many countries such as the United States this is done by using International Trade-mark Classes. The International Trade-mark Classes are categorized into 45 classes, Classes 1-34 relating to products and Classes 35-45 to services. Canada does not use this system and therefore trade-marks must be described in ordinary commercial terms for Canadian filing purposes.
For example, Class 32 refers to “light beverages” which are enumerated as: “beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages”. For Canadian filing purposes, the wares “non-alcoholic beverages” require further specification, for example carbonated drinks, colas, energy drinks, sports drinks, drinking water, fruit-based soft drinks, fruit juices, hot chocolate, milk, non-dairy soy, coffee or tea.
6. Copyright may reside in Trade-marks and must be Acquired.
Where a trade-mark is in the form of a design, the design will be subject to copyright protection, as well as trade-mark protection. If a trade-mark owner retains a graphic artist to develop and design a trade-mark, the trade-mark owner should obtain all rights to the design, including the ability to make changes to the design. This is generally done by means of a simple contract known as an “Assignment”.
In Canada, copyright need not be registered as rights to the design arise at the time of creation, which provides the copyright owner with remedies for copyright infringement at common law. These remedies are additional to the remedies that the trade-mark owner will have under the Canadian Trade-marks Act.
By: Mark Timmis
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Timmis Law Corp specializes in helping you to perform a trademark search and to register a trademark in Canada.