Trademarks — Registration and Enforcement

Branding. It comprises all the elements that enable customers to associate you with your products and services. It is what assists them in finding you for a return purchase or to explore the rest of your product line, to attribute credibility and quality to your offering.

Having a suitable trademark protection strategy in place is vital in today’s global marketplace. Unless you act proactively, you are increasingly susceptible to brand dilution, causing not only headaches but increased expense and potentially lost customers.

Trademark protection, in Canada, can be used to protect your brand names, logos, slogans and even distinctive sounds, but only if you engage a trusted advisor that understands your business, its position in the marketplace and where you want to take it.

Bhole IP Law assists clients in preparing and filing trademark applications in Canada and internationally through a network of global associates. Bhole IP Law also conducts registrability searches, trademark portfolio strategy and management, trademark validity and infringement opinions, and enforcement.

Trademark Essentials

A trademark is an indicator of source. Typical examples of trademarks are words, logos and slogans that are associated with a particular entity.

In Canada, trademark registration is permitted for trademarks that are distinctive of their source in respect of particular wares or services. To retain distinctiveness, the trademark owner must ensure that the trademark is not confusingly similar to existing or even future trademarks used by others. In such a case, the trademark loses distinctiveness, would no longer serve as an indicator of source, and is no longer worthy of protection.

Trademark registration entitles the owner to prevent others from using the trademark or confusingly similar trademarks in Canada.

It is important to understand that registration is not required for a trademark to be a trademark. Rather, the fact that a word, logo, slogan, etc. is indicative of its source means that it serves as a trademark. In fact, the Canadian Trademarks Act provides certain protections to owners of unregistered trademarks.

Trademark registration, however, provides several benefits to the trademark owner. Among these benefits are increased certainty, potentially increased geographical protection and easier enforcement. A registered trademark is valid for up to 15 years and can be renewed indefinitely provided the trademark is in use in the marketplace and remains indicative of its owner.

On the other hand, certain trademarks are not entitled to registration, including those that are clearly descriptive or deceptively misdescriptive of the wares or services with which they are associated, those that are primarily merely a name and those that are protected for certain uses.

Filing a Trademark

A trademark application, when filed in Canada, must set out at least the name and address of its owner, the trademark, a list of the wares and services with which it is used (or to be used), a date of first use in Canada (or if it is for proposed use), and a declaration that the applicant believes it is entitled to the registration of the mark.

There are several grounds of entitlement available to a trademark applicant. The two most commonly cited grounds are “actual use” in the Canadian marketplace and “proposed use” in the Canadian marketplace. While “proposed use” is available for applicants who wish to file a trademark application before use commences, the trademark must be in use before the application can proceed to registration.

Examination

A trademark application is examined by the Canadian Trademarks Office (TMO) to ensure it complies with formal and substantive requirements. Typically, an applicant may find that the TMO requests that the wares and services recited in the application be recited in more specific terms. This is to prevent any applicant from claiming trademark protection within an overly broad segment of the marketplace. Additionally, the TMO may cite one or more previously filed trademark applications and registrations that are considered confusingly similar to the subject trademark. In such a case, the applicant can try to argue that the marks are not, in fact, confusing or the applicant can amend the application to avoid confusion (essentially, by removing wares and services that are similar to those used with the cited mark).

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Once an application has successfully proceeded through examination, it is advertised in the Canada Gazette. Advertisement triggers the start of a two-month opposition period entitling a third party to oppose the registration of the trademark, usually on the grounds that the third party is the owner of a confusingly similar trademark.

Allowance

If an applicant is not opposed, or the opposition fails, the application will be allowed. An allowed application can proceed to registration upon payment of the registration fee and, if the application was filed on the basis of proposed use, upon the filing of a declaration that the trademark is now in use.

Registration

Once registered, a trademark has protection for a 15-year term, which can be renewed for subsequent 15-year terms provided that the mark is still registrable. A registered trademark can be expunged from the trademark registry if it is not used for a period of at least 3 years in the marketplace.

Foreign Trademark Applications

In many cases, an applicant will want to effect the filing of foreign trademark applications, which Bhole IP Law is not directly entitled to file. Bhole IP Law, in these cases, will engage foreign counsel to conduct filings on the client’s behalf.

If foreign filings are required, clients should be cognizant that instructions to file should be provided well in advance (ideally at least 2 weeks in advance) as foreign counsel may need to obtain certain information regarding the applicant and its other applications and to format the application to comply with local practice.

Additionally, in most cases, Bhole IP Law will require the client to provide a fee retainer to cover the fees of the foreign filing prior to providing instructions to foreign counsel.

Priority Rights

In certain cases, the filing of a trademark application in one jurisdiction provides an applicant a six-month window to file corresponding foreign applications. In such cases, the later-filed foreign application will be evaluated as if filed on the earlier filing date.

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