Any business owner should understand how the trademark system works. In Canada, the Trademarks Act applies to a trademark/brand name and is of fundamental importance. Obtaining a trademark registration facilitates the protection of the mark.
The Trademarks Act provides for a public registry system which is national in scope, showing proscribed information for each registered trademark. The Act facilitates the protection of trademarks by granting exclusive national rights to owners and providing for public notice of the rights.
The power of attraction of trademarks is recognized as among the most valuable of business assets. However, whatever their commercial evolution, the legal purpose of trademarks continues to be their use to distinguish the goods or services that the mark is used in association with by the trademark owner from the goods and services of others. A trademark is a guarantee of origin or source and inferentially, an assurance to the consumer that the quality will be what he or she associates with a known trademark. A trademark should also create and symbolize a linkage. A trademark is a symbol of a connection between a source of a product and the product itself.
The Act also rests on principles of fair dealing and is sometimes said to hold the balance between free competition and fair competition. In applying its provisions, the interests of the public and other merchants and the interest of the trademark owner must be considered.
This registration system co-exists with common law trademark rights. Common law rights are acquired through actual use of the common law mark in association with goods or services. As a common law trademark becomes known and goodwill is associated with it, the owner of the mark can assert claims against others who use confusing trademarks in the specific region or area that the common law trademark owner has built up goodwill. Common law trademark rights may be helpful on a case-by-case basis, but they are less robust than the rights associated with a registered trademark.
John S. McKeown
Goldman Sloan Nash & Haber LLP
480 University Avenue, Suite 1600
Toronto, Ontario M5G 1V2
Direct Line: (416) 597-3371
Fax: (416) 597-3370
Email: mckeown@gsnh.com
These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.
© 2019 John S. McKeown
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