Background
The primary methods of protecting a brand name are by obtaining a registration under the Trade-marks Act and by bringing an action in the courts for infringement under the Act or by asserting common law claims to enjoin passing off. Obtaining a registration is an effective first step in protecting a brand name as it will assist the owner in asserting rights relating to the registration.
The Trade-marks Act
The Trade-marks Act provides a public registry system which is national in scope, showing for each registered trade mark: the date of registration, a summary of the application for registration, a summary of all documents deposited with the application or subsequently filed affecting rights to the trade mark, particulars of each renewal and particulars of each change of name and address. The purpose of providing this registry system is to define and protect the rights of registered trade mark owners.
Common Law Rights
This registration system co-exists with common law rights relating to trade marks and trade names. Common law rights are acquired through actual use of a mark in association with wares or services. As a common law trade mark becomes known and goodwill is associated with it, the common law trade mark owner will be able to assert claims against others who use confusing common law trade marks in the specific region or area that the common law trade mark owner has built up goodwill. These rights are asserted by bringing an action for passing off in the courts. A common law trade mark owner may also assert its rights by opposing an application for the registration of a trade mark.
The Advantages Associated with Obtaining a Trade Mark Registration
The Trade-marks Act facilitates the protection of trade marks by providing for public notice of rights and granting exclusive rights to owners. There are a number benefits associated with obtaining a registration which include:
(a) A trade mark registration is evidence of the exclusive rights granted under the Act and of the validity of the registered mark. The owner of a common law trade mark has to prove it has built up good will.
(b) The registration of a trade mark confers exclusive rights to the use of the trade mark throughout Canada even though the owner may only be using the mark in a specific area of the country. Such rights may not be available to the owner of a common law trade mark.
(c) A registration provides a barrier to registration by others of confusing trade marks and is referenced on a searchable register. There is no registry of common law marks.
(d) As an application may be filed on the basis of proposed use the system in effect allows a brand owner to reserve rights in a trade mark which has not been used.
(e) A registration carries the right to apply for a corresponding registration in other countries that adhere to the Convention of the Union of Paris. The Convention provides for a priority system implemented by national legislation, under which an applicant can rely on its earliest filing date in one country as its filing date in another so long as the application is filed within six months of the applicant’s initial filing.
(f) After five years a registration becomes incontestable against attack on the grounds of previous use or making known unless it is established that the person who adopted the mark did so with knowledge of that previous use or making known.
(g) The Act facilitates the transfer and licencing of trade marks. This can be very helpful when a business is to be sold or financed.
(h) Registration makes available two statutory causes of action which are not available to common law trade-mark owners, that is, the right to bring proceedings for trade mark infringement and for depreciation of the value of the goodwill attached to a registered trade mark.
(i) The owner of a registered trade mark may bring proceedings in the Federal Court of Canada, which has jurisdiction to grant injunctions with nationwide effect.
Comments
Serious consideration should be given to obtaining trade mark registrations when it is appropriate to do so since there are many advantages and the costs are not prohibitive.
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. They are current as of March 25, 2013.