Trademarks


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.

Trademarks are some of the most valued assets in intellectual property law, especially in the business world. They work to protect the calling cards for a business such as its brand names, logo designs, words and phrases, slogans, symbols, even sounds, smells, colours and textures, or any combination of distinctive or aesthetic qualities.

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.

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.

Types of Trademarks

There are various forms of registrable trademarks, including:

  • Ordinary Marks
  • Certification Marks
  • Distinguishing Marks

Ordinary marks are used to indicate the source of a product or service. These include protecting design elements such as brand names, logos and slogan, or alternative indicators such as sounds, smells and textures

Certification marks are trademarks that are used to certify a particular quality of another business‘ goods or services. They lend third party endorsement to the other business, that its goods or services meet the defined standard. Certification marks can generate significant licensing revenue where the certification is highly sought after.

Distinguishing guises are trademarks that are associated with the visual aspects of a product or its packaging. They extend trademark protection beyond merely words and logos to the actual product itself, whether that is through shape, colour or texture.

In Canada, when you register a trademark, you own it for the next 15 years with an option to renew, as long as you continue to use it.

The process of applying for a trademark involves a deep understanding of your business, its goals and the right expertise. The registrar can offer basic information, however, it is always helpful to have the direction of a dedicated advisor who can provide a thorough search, assess whether your mark will be registrable, obtain broad protection, , negotiate with the Trademarks Office, and finally obtain a registration.

That’s where we come in.

What we offer

Bhole IP Law provides a thorough list of trademark-related services in Toronto, all across Canada and internationally through our network of foreign counsel.

  • Clearance searches
  • Infringement analyses
  • Trademark application preparation and filing
  • Examination / Prosecution
  • Opposition
  • Trademark enforcement
  • Cancellations and invalidations
  • Passing off
  • Dilution
  • Anti-counterfeiting
  • Domain Name Disputes (UDRP, CDRP)

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 goods 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 goods 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 goods 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 Trademarks Office requests that the goods 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 goods and services that are similar to those used with the cited mark).

Advertisement

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. Bhole IP Law has a trusted network of foreign counsel and, 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.

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.

Bhole IP Law has developed extensive client relationships in Toronto and all across Canada. Our goal is to provide valuable insight to our clients and offer customized solutions that are tailored to each business and situation.

Are you looking to register a trademark? Get in touch with us today.