Calgary – 22:09 MST – Many companies want some basic guidance on trade-mark usage. This discussion provides some practical tips and information on trade-marks in Canada.

Q: What is a trade-mark?

A: A trade-mark is a brand name which distinguishes one company’s products or services from the products and services of all the competitors in the marketplace. It’s a way of identifying which product or service comes from which company or “source”. The most common forms of trade-mark are logos or designs (for example, the Nike swoosh or the Royal Bank lion), letters or initials (such as IBM or DKNY) or slogans (such as “Don’t leave home without it” or “The breakfast of champions”). Successful trade-marks are valuable assets of their owners which convey a secondary meaning to consumers.

Q: How are trade-marks created?

A: Trade-marks are created through use. In this sense, “use” refers to use of the mark by the trade-mark owner in association with the sale of the owner’s products and services. Registration is not required for a trade-mark to exist, although registration is recommended. When you apply to register your trade-mark, your trade-mark agent will ask you about the “date of first use”. In other words, the question is “When did you start using your mark in the sense of selling products or services in association with that mark?” It does not refer to the date when you first had the idea for your mark, or the date business cards were printed, or any number of other points which might be mistaken for actual “use” in this sense. To document your use of the trade-mark, keep copies of invoices, hang-tags, labels, copies of advertising, pictures of signage and other indicators which coincide with the date of sales of your products or services using that mark.

Q: When do I use the “TM” and the ®?

A: This is a common question. In Canada, the Trade-marks Act does not refer to the TM or ® symbols. Customarily, the TM symbol is used to designate unregistered trade-marks and the ® is used with registered trade-marks. If you have a registered trade-mark, always use the ® symbol, to put the world on notice that you have registered trade-mark rights in connection with that mark. If your mark is unregistered, then use the TM as a way of indicating your intention to protect the mark. For those trading into the United States, we recommend using the ® symbol only in association with a mark registered in the US. The use of the ® symbol in the US for a mark which is not registered in the US can be considered a type of offence under what is essentially consumer-protection legislation.

Q: What’s the difference between a registered trade-mark and one that isn’t registered?

A: A mark can be unregistered and still be a valid trade-mark. This is known as a “common law” mark. A trade-mark owner enjoys more benefits and rights of enforcement under the Trade-marks Act if the mark is registered.

Q: What happens in the registration process?

A: The registration process starts with searches to determine the availability and registrability of the proposed mark. A trade-mark agent will typically render a report or opinion on the availability and registrability of the mark. If the path forward is clear, an application is prepared in a particular form, and submitted to the Trade-marks Office (the Canadian Intellectual Property Office) for examination. An examiner at the office will review the application and if there are no objections to registration (for example, an objection based on the similarity of the proposed mark with an existing mark owned by someone else), the mark will proceed. The examination process ends in “advertisement” of the mark which refers to the publication of the proposed mark (along with all the other proposed marks which are being applied for) in the Trade-marks Journal. A third-party (usually a competitor) may take the opportunity to oppose the application if the mark is confusingly similar to an existing mark, or if the mark is vulnerable to attack on any number of other grounds of opposition. Assuming there is no opposition or the opposition challenge is defeated (or a negotiated settlement is reached) the mark may proceed to allowance and ultimately registration. The whole process can take 12 – 18 months.

Q: Can others use my trade-mark?

A: In short, no-one else should use a mark without the permission and control of the owner. This goes for business partners, affiliates, joint-venture partners, distrubutors, even subsidiaries. Any use by someone other than the owner can jeopardize the mark. All such uses by others should be properly controlled and documented with properly-drafted Trade-mark License Agreements.

Q: Can you give me some tips on trade-mark usage guidelines?

A: Yes, tips on trade-mark usage will appear in future posts!