Protect Your Image

Authour:
Trade-Marks

Protect Your Image.

Introduction


Modern business is extremely competitive and success often depends on
the image you project. Although you may deliver excellent products or
services, if people can't easily identify them, chances are that your product
will be overlooked in favour of those with more effective branding. Your
trade-Mark distinguishes your wares and services from those of your
competitors, and helps to establish your identity in the marketplace.

At
Lexcor Business LawyersLLP, we are registered
trade-mark agents and, as such, have been uniquely trained to advise you
on all aspects of trade-mark law.

What is a Trade-Mark?

A trade-mark may be a word, a slogan, a logo, a name, a shape, a colour
applied to an article (or any combination of those elements) which is used
to distinguish your wares or services from those of others in the
marketplace. Only registration of your trade-mark will give you exclusive
rights of use under the Trade-marks Act. In a sense, registration of your
trade-mark is like a legal title to protect your intellectual property. The
Trade-Marks Act (Canada) defines a trade-mark as "a mark that is used by
a person for the purpose of distinguishing or so as to distinguish wares or
services manufactured, sold, leased, hired or performed by him from those
manufactured, sold, leased, hired or performed by others."

Benefits of Registration

Upon registration of a trade-mark (the "Registered Mark"), the Owner of the
Registered Mark is entitled to receive a Certificate of Registration which
indicates that the Owner has the exclusive right to use the Registered Mark
throughout Canada in association with the specific wares or services
specified in the Certificate of Registration. This right will be deemed to be
infringed by any person who sells, distributes or advertises any wares or
services in association with any trade-mark or trade-name which is
confusingly similar to the Trade-Mark.

Once the Registered Mark has been registered for a period of five years,
the Owner will attain even greater protection in that the Registered Mark
then acquires a certain degree of incontestability. In particular, after the five
year period, the Registered Mark cannot be invalidated only on the basis
that some other person had previously used any confusing mark, unless it
is proven that the Owner actually knew of such prior use.

A Registed Mark in Canada can be used to claim priority in registering the
trade-mark in other countries, but foreign registration may not be possible if
the trade-mark is not registered in Canada.

Registration is direct evidence of ownership of a trade-mark and can be
required to obtain and protect internet domain names or universal resource
locators (URLs).

In a dispute, the Owner does not have to prove ownership of the
Registered Mark, rather, the burden of prove is on the person contesting
the Owner's rights.

Registered Marks are valuable assets in that they may enhance the ability
of a business to expand through licensing rights to use the Registered
Marks through distributorships or franchises.

A Registered Mark can be enforced throughout Canada, whether or not it
has been used throughout Canada. An unregistered trade-mark can be
enforced only in those areas where the trade-mark has been used and
goodwill has been established.

How do I Register a Trade-Mark?

To register a trade-mark, an application must be submitted to the Canadian
Intellectual Property Office ("CIPO"), which application may be based on
either actual use or proposed use of the trade-mark. The application must
be accompanied by a filing fee of $150.

Once the application is submitted to CIPO, a Notice of Filing will be issued
to the applicant confirming that the application has been received.

The application will then be reviewed by a trade-marks examiner on behalf
of CIPO. The examiner may approve the application for advertisement or
he or she may notify the applicant of any objections. If any objections are
raised, the applicant will be provided an opportunity to respond to the
objections.

Provided that there are no objections or any objections by the trade-marks
examiner are overcome by the applicant, the application will be approved
for advertisement and a formal notice of approval is issued to the applicant.

Shortly after the application is approved, it will be advertised in the
Canadian Trade-Marks Journal. Once the application is advertised, any
interested party may file a statement of oppostion with CIPO within three
months of the date of the advertisement. The Statement of Opposition may
be based on a variety of grounds such as the prior use of a confusingly
similar trade-mark or trade name. If a Statement of Opposition is filed, the
applicant may simply abandon the application or alternatively, file a
Counter-Statement. If the applicant decides to continue to prosecute the
application the Opposition Board will determine the issues, which are often
lengthly and complex matters.

If there are no oppositions or any oppositions are successfuly overcome or
withdrawn, the application will proceed to allowance and a notice of
allowance will be delivered to the applicant.

Once the application has been allowed, a Certificate of Registration will be
issued to the applicant upon payment of a final registration fee in the
amount of $200.00. Also, if the application was filed based on proposed
(rather than actual) use, the applicant will be required to file a Declaration
of Use with CIPO stating that the trade-mark has been used in Canada and
the date upon which use of the trade-mark commenced.

How Long Does It Take to Register a Trade-Mark?


Recently there have been significant backlogs at the trade-marks office and
it is not uncommon for the registration process to take in excess of two
years from the date of application, even if there are no complications.
Objections by the Trade-marks Office and any Opposition proceedings
commenced by third parties may extend this time. Throughout the
application process, however, the applicant should use its trade-mark and
should give notice to the public at large that it is claiming trade-mark rights
by using the ™ symbol as follows: YOUR TRADE-MARK™.

How Much Does it Cost?

A typical trade-mark application will cost approximately $1,500 - $2,000
including fees and disbursements (filing and registration fees, etc.) In most
circumstances, we will require a deposit (retainer) of between $600 - $750
which will usually be sufficient to cover the cost of all fees and
disbursements related to conducting a preliminary search of the trade-mark
database for similar and potentially problematic prior registrations and the
preparation and filing of the trade-mark application. The balance of the
costs will be dependant, in large measure, upon the number and nature of
oppositions to the registration of your proposed trade-mark and will not be
charged to you until such time as those charges are incurred.

Duration and Maintenance

The Registered Mark is effective for a period of 15 years from the date of
registration. In other words, unless renewed, the Registered Mark will
expire 15 years from the date of registration The registration may, however,
be renewed for successive 15 year periods upon payment of a $300.00
renewal fee at any time during the last year of the 15 year term.

Loss of Trade-Mark Rights


Once a trade-mark has been registered, there are only two ways in which
the registration may be lost, as follows:

1. A trade-mark may be cancelled for reason of non-use. This is an
inexpensive administrative proceeding whereby any party interested
in cancelling a trade-mark registration would notify the Registrar of
such intention. Upon receipt of notice, the owner of the trade-mark
would be required to submit evidence that the Trade-mark has been
used within the preceding two-year period, otherwise the trade-mark
will be cancelled. Effectively, this means that, although the trademark
will still appear on the register, it will be noted as expunged
and it will not pose any barrier to registration of any confusingly
similar trade-mark; and
    2. A trade-mark may be expunged in proceedings commenced in the
Federal Court of Canada on the basis that it is invalid for one of the
following reasons:

          (a) The trade-mark was unregistrable at the time it was
          registered;
          (b) The trade-mark was not distinctive at the time the
          proceedings were commenced;
          (c) The trade-mark has been abandoned;
          (d) The registrant was not the person entitled to secure
          registration of the trade-mark.

Proper Trade-Mark Use and Marking

In order to preserve the rights afforded by registration of a trade-mark, care
should be taken to use and mark them properly. In particular, you should
take care to ensure that:

1. the trade-mark does not fall into disuse (i.e. become abandoned);
2.the trade-mark is not used by any unauthorized person;
3. the trade-mark is not used by any licensee in circumstances in
which the character or quality of such licensee's wares are not under
the control of the owner;
4.  the trade-mark does not become the generic name of the product
which is associated with it. In other words, the trade-mark should
always be used as an adjective to describe the product and not as a
noun or a verb. As an example, if you owned the trade-mark
"Kleenex" in association with facial tissue, that trade-mark should
not be used like this: "I sell Kleenex", rather it should be used like
this: "I sell Kleenex facial tissue";
5. the distinctiveness of the trade-mark is preserved; and 
6. the trade-mark is identified with an appropriate trade-mark notice.
In this regard, although there is no statutory requirement to do so,
using an appropriate mark will serve to notify the public that trademark
rights are being claimed. Before registration, it is appropriate to
use the ™ symbol as follows: YOUR TRADE-MARK™. Once a
trade-mark is registered, it is appropriate to use the symbol ® as
follows: YOUR TRADE-MARK®.
7. If a trade-mark is being used by persons other than the owner of
the registered trade-mark, it is important to ensure that the
appropriate trade-mark licenses are in place and that all associated
products are labelled to indicate that the trade-mark is being used
under license. An example of a suitable form of legend would be:


TRADE-MARK®
TRADE-MARK® is a registered trade-mark of TRADE-MARK
OWNER used under license.

By using the legend as set out above, a presumption is created that
the use of the trade-mark is licensed by the registered owner and
that the quality and character of the products are under the control
of the owner. This will be advantageous in the event of any future
litigation, as it will allow the owner to avoid the necessity of proving
that a license to use the trade-mark exists.