Please keep in mind that this is not legal advice.  The information provided herein is for educational purposes only. If you would like to get in touch with a Canada trademark lawyer to help you with your application or trademark dispute, then you are encouraged to seek a professional (e.g. make a post on Dynamic Lawyers).

As a follow up to my blog post about Trademark Law in Canada, I thought I would continue the discussion by addressing some common issues people have about trademarks.  Remember: you can make a post on Dynamic Lawyers or contact me directly if you need to start a trademark application.  The price is $1500 (includes GST but does not include government fees of $250) to prepare and file the initial application.  This covers the initial interview/research, preparing the application, and filing it on your behalf.

With these things said, let’s get into the nitty-gritty:

Does incorporating a business protect my name or logo?
Nope. Worth mentioning is that, depending on which jurisdiction you incorporate in, the government may prevent you from selecting a name because it is too confusing or similar to an already existing name – be it a trademark, another corporate name, a registered business name, etc.  In the event that the government goes ahead and allows the incorporation, there is nothing to prevent another business – be it a sole proprietorship, partnership, corporation, etc – from challenging the use of your corporate name on the basis that that name is too similar or confusing with its name in relation to products and services that both of you are selling.  So incorporating cannot protect you in the way that trademarking can.  If you are relying on being incorporated to afford you adequate protection, think again!

How long does a Trademark registration last?
Once your trademark application has passed all the procedural hurdles, you will be entitled to register your trademark for 15 years (s. 56(1) of the Trademark Act).  After that, you will need to renew your trademark registration or risk losing it.  There is a small government fee (of either $350 if done online or $400 if done offline) that goes along with the initial registration and renewal.

Who can own a Trademark?
A “person” can own a trademark, which includes individuals, sole proprietorships, partnerships, corporations, not for profit corporations, etc.  So a “person” means a legal person.  FYI, the Trademark Act also states that a “person” includes a lawful trade union or lawful association.

How do you select a good Trademark?
The way to select a good trademark is to do your research and be able to describe the wares and services related to the trademark in such a way that will be acceptable to the Canadian Intellectual Property Office.  We begin with researching.  The first thing to do is to check if your proposed name is similar to any currently registered or pending trademarks.  You can do this by visiting the trademark database website and punching in your trademark.  If you have a logo, you’ll need to hire a trademark agent in Ottawa (where CIPO is) who has access to their database so that they can compare your proposed design to others in the database.

What do I need to include in my Trademark Application?
Your trademark application will consist of:

• A cover letter addressed to the Canadian Intellectual Property Office requesting registration of a trademark;
• Contact information for the person applying for the trademark;
• The proposed trademark (word, logo, design, etc.);
• The wares (i.e. products) and services associated with the trademark – either actually in use or proposed in Canada;
• A filing fee of $250 if done online (otherwise, it’s $300);
• The contact information of a trademark agent (if one is filing the trademark on your behalf).

What happens after you file a Trademark Application?
After you file a trademark and pay the government fee, the following steps take place:

1. The Canadian Intellectual Property Office (“CIPO”) will contact you if information is missing.
2. If nothing is missing, CIPO will issue a filing date and application number.
3. CIPO then examines the proposed trademark in light of other registered trademarks.
4. There are a number of grounds upon which CIPO will write back to you, contesting your proposed trademark.  Those grounds are quite complicated and are the discussion of another blog.
5. If there is a problem, you will have up to a certain date to either make amendments to your application or respond to the examiner’s arguments and explain why he/she may be wrong.  Interestingly, you can always freely amend your statement of wares and services to be more narrow in respect of what you originally filed, but you cannot extend them beyond that original scope without paying a fee of $450 (it is viewed under s. 41(2) of the Act an application in itself!).  If they accept your arguments, the examiner will withdraw their challenges.  IF they do not, you can hire a lawyer to appeal their decision to the Federal Court of Canada.
6. Many claims get abandoned due to failure to respond within the timeline or at all!  Make sure to have a lawyer review and respond within the appropriate timeline.
7. If the examiner is satisfied with your trademark application, it will be advertised in the Trademarks Journal.  The government used to charge $1150 for a subscription to the journal, but now offers it for free on CIPO’s website.
8. After your proposed trademark is advertised, there will be a 2 month period during which third parties (specifically “any person” may do so) can contest the registration of your trademark.  Such party must pay $750 to file a statement of opposition.  If this happens, you will be notified and have the opportunity to make arguments to CIPO or amend your application.
9. If third party opposition to your trademark is unsuccessful, abandoned, or resolved in your favour, then your application will be allowed to be registered.  To register, you must pay a fee of $200. You will receive a Registration Certificate, which shows proof that your trademark has been registered in Canada.

This whole process could take anywhere from 1 to a number (e.g. 10 years).  It is a complex area and professional assistance should be sought from the get go to avoid wasting time and money in the long run and getting the trademark properly registered.

Can I profit from having a Trademark?
As the owner of a registered trademark, you can sell/transfer/assign or license out the trademark.  Remember: a trademark is an asset that has a long-lasting benefit.  Goodwill can grow in the trademark if the brand is recognized and the strong in a particular geographic area or for a particular product, service, or idea.  Licensing gives someone other than the owner the right to promote products, services, and ideas using the trademark.  Franchisors, for example, typically include the right for a franchisee to use their trademark as part of the overall franchise agreement.

How do I protect my registered Trademark?
To protect your trademark, you need to be mindful of proposed trademark applications that may be confusing or similar to your own, or violate other trademarking requirements/rules.  Just be sure to either check (or have a lawyer check) the Trademarks Journal and hire a lawyer to contest these proposed trademarks.

How do I get a Trademark in other countries?
You will need to inquire into those jurisdiction’s trademark laws and procedures.  Remember: trademark protection is geographical.  Just because you have a registered trademark in Canada does not translate into you having trademark protection anywhere else.  As such, you should apply to register in other countries and you should do so early (because trademarking can take years before a final determination is made to allow the trademark to be registered)!

written by admin \\ tags: CIPO, file trademark application, filing trademark, how long does a registered trademark last?, how to select good trademark, profit trademark, protect registered tradmark, trademark, trademark application, trademark law in Canada, trademarks journal, who can own a trademark?

Please keep in mind that this is not legal advice.  The information provided herein is for educational purposes only. If you would like to get in touch with a Canada trademark lawyer to help you with your application or trademark dispute, then you are encouraged to seek a professional (e.g. make a post on Dynamic Lawyers).  We have Canadian trademark lawyers who can assist you in this regard (I would know, I’m one of them!).  If you want to get in touch with me directly, feel free to email me at michael@dynamiclawyers.com to discuss all your trademarking needs!

In this blog, I’ll be discussing some of the basic questions about trademarks, including what exactly is a trademark, what is the Canadian trademarks database, do I have to register a trademark, and what are the advantages of registering a trademark.

Definition
A trademark is a word, symbol or design, or a combination of these, used to distinguish the goods or services of one person or organization from those of others in the marketplace.

There are three main kinds of Trademarks in Canada:

1. Ordinary Marks;
2. Certification Marks; and
3. Distinguishing Guise.

These kinds of Trademarks will be discussed briefly in turn.

Ordinary Marks
The Canada Trade-Marks Act defines an Ordinary Trademark 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,

So a trademark is a word, symbol, picture, or combination of these things used to distinguish a product (called a “ware”) or a service of one business from another that offers similar wares or services.

Certification Mark
A Certification Mark is defined as follows:

a mark that is used for the purpose of distinguishing or so as to distinguish wares or services that are of a defined standard with respect to

(a) the character or quality of the wares or services,

(b) the working conditions under which the wares have been produced or the services performed,

(c) the class of persons by whom the wares have been produced or the services performed, or

(d) the area within which the wares have been produced or the services performed,

from wares or services that are not of that defined standard;

So a Certification Mark simply identifies products or services that meet a defined standard (e.g. wool mark).  This kind of trademark can be licensed or used with permission by other companies to indicate certain standards.

Distinguish Guise
A Distinguishing Guise is defined as follows:

(a) a shaping of wares or their containers, or

(b) a mode of wrapping or packaging wares

the appearance of which 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;

So a Distinguishing Guise identifies the unique shape of a product or package (e.g. Coca-Cola bottle).

Trade name
Don’t confuse a trademark with a “trade name”, which is simply a name a corporation registers to carry on business under that name.  You’ll often find corporations, perhaps numbered corporations like 123456 Ontario Inc. or 123457 Canada Ltd., carrying on business or c/o/b as “X” (here, “X” could mean “Pete’s T-Shirt Shop”).    You’ll also find the term “operating as” being used.  The idea behind the trade name is that a corporation may have a lousy corporate name and want to use a commercial name instead. These things being said, the trade name must be registered, does not afford the corporation protection as would a trademark and, on contracts between the corporation and third parties, the full corporate name must be identified (e.g. Pete’s T-Shirt Shop c/o/b as 123456 Ontario Inc.).  This is meant to protect the public so that they know exactly who they’re dealing with – namely, a corporation instead of a sole proprietorship, partnership, joint venture, association, etc.

Canadian Trademarks Database
The Canadian Trademarks Database is the official database maintained by the Canadian Intellectual Property Office which presents regularly updated content about trademarks in Canada.  The database is a very flexible tool that can be searched using various keywords and fields.  The results display information concerning the applicant, the status of the application, the description of the wares and services and when they were first used, and the action taken by the government (and even third parties) concerning the trademark.

Do I have to Register
You are not required to register a trademark in Canada.  Many trademarks are established under common law (i.e. historical judge made law) on the basis that a party has been using the trademark for a long time.  However, you should carefully understand and appreciate the advantages of doing so sooner rather than later, and the disadvantages of failing to do so.

Advantages to Registering a Trademark
Let’s be clear here.  Simply registering a trademark doesn’t automatically mean that you will be able to use it for your specific wares and services to the exclusion of everyone else in Canada.  There may be situations where someone has been using an unregistered trademark longer than you have and, even if you have registered it, you may be required to stop using it because of the other party’s common law rights (it depends on the circumstances of the particular matter).

In any event, registration is proof of ownership. As such, registration acts as both a powerful shield and a sword against potential infringers.

The primary advantage to registering a trademark is the direct evidentiary value that comes with registration.  Registration is direct evidence that you have been using a trademark beginning from a certain period of time. Registration requires a comprehensive review, which adds to your trademark’s authority. Hence, you will be able to point to registration in support of your use of the trademark through Canada for your particular wares and services for the duration of the registration period (i.e. 15 years).  If infringers come around, then you’ll be able to bring an action against them and use your registration as evidence to seek damages and prevent them from using their trademark.

Disadvantages of Not Registering a Trademark
It is highly advisable to register your trademark as soon as possible. Even if you don’t register a trademark, you can still use it.  The problem, however, may come when a party anywhere else in Canada with similar wares and services registers a trademark that is similar to the one you are using.  The result may be that a judge may order you to stop using that similar or confusing Trademark on the basis that someone else registered it first (i.e. back to the evidentiary nature of registering a trademark).

written by admin \\ tags: canada trademarks, canadian trademarks database, do i have to register a trademark, kinds of trademarks, Michael Carabash, registering a trademark, trademark lawyer, trademark lawyers, trademarks canada, why register a trademark

Dynamic Lawyers continues to expand its free Q and A section of the website, this time by answering 15 common Qs and As about Trademark law in Canada.  If you have comments, questions, or concerns about trademark law in Canada, I’d encourage you to contact me directly at michael@carabashlaw.com or make a post on Dynamic Lawyers.

written by admin \\ tags: trademark law in Canada

So I was asked today, and so I shall try my best to answer, the following question: who owns an artistic work in the context of a business deal?  Let’s start off with the basics, shall we?  To begin, you must always look at the specific contract under which the artistic work was offered, created, and delivered.

If that contract was one of employment, then it is more likely than not that the employment contract says something like: all works created during the course of employment are the property of the employer, who derives all the benefit therefrom.  This makes sense.  In exchange for a steady paycheck, benefits, a pension, etc. all new works created by an employee belong to the employer.  So, unless the employment contract says otherwise, it’s typically the employer who owns the artistic work and the copyright (i.e. the legal protection that goes along with it).

If the contract was one of services – say, for example, an independent freelance artist was to create a work for a client, then you’d still need to look at the specifics of the contract.  Typically, you find that a freelance artist owns the work and the copyright and simply licenses out the work to a particular client (and perhaps collects a royalty or some other fee structure); on the other hand, some contracts may provide that artists own NOTHING and that the client owns the work when it’s finally produced and delivered.

So there you have it: the party which owns an artistic work and benefits from the copyright will depend on the nature of the business relationship between the two parties.

written by admin \\ tags: artistic work, copyright