By Graham Knight, Partner
The law has long recognized the need to protect the goodwill that accrues to an entrepreneur carrying on business in the marketplace. This goodwill is protected whether or not a formal trade mark is registered.
In absence of trade-mark registration the remedy for infringement of a mark, at common law, is called ‘passing off’. While such remedy exists, there is no comparison to the privileges afforded an entrepreneur who gains trade-mark status.
In general terms, trade-marks* are an indicia of the source or quality of a product. Trade-marks apply to wares and/or services. Trade-mark protection is extended by the federal government and is thus effective nationwide, provided that the applicant shows that the mark is in use, or will be used, in Canada, (as opposed to just in Barrie or in Ontario).
There are a number of stages an applicant goes through in order to obtain a trade-mark. These are:
- Availability search – the proposed mark is searched in Ottawa to ascertain whether or not someone else has already received or applied for a mark that is the same or confusingly similar.
- Filing - assuming the availability search is promising, a trade-mark application is filed which can be based on use or intended future use.
- Trade-Mark Office inspection – an Examiner at Industry Canada reviews the trade-mark application as against Industry Canada’s own searches and either approves the mark or requests changes to the application.
- Advertisement – once the trade-mark Examiner has approved the application it is advertised for a period of 90 days so that third parties may comment on the application if they wish to do so.
- Registration – assuming no objections are received, or if opposition is received it is answered satisfactorily, the mark moves to registration. If the mark is for proposed wares or services, one must file an affidavit indicating that same are actually being used before the mark will issue.
- Duration - the trade-mark, once received, is valid for a period of 15 years provided that it is used continually in association with the wares and/or services claimed.
Trade marks may be words, logos, or a combination of the two.
Trade-marks may claim colour. If you do not claim a colour, then the mark or logo representation is protected in all colours.
There are also language considerations that apply should a French version of the mark be deemed necessary or convenient to your purposes.
The fee for a preliminary trade mark availability search is about $600.00. Government filing fees presently total $500.00 divided between an initial fee of $300.00, and the balance of the fee later in the process if the trade-mark application survives that far.
The cost of trade- mark applications vary because, like litigation, it is impossible to know at the outset the amount of time that will be required to complete the file.
Presently the process takes about twenty months.
*This blog relates to “ordinary marks” which are generally names businesspersons use in conjunction with wares or services. There are also “certification marks” which evidence a product or service meeting a defined standard. Finally there are “distinguishing guises” which relate to the shaping of products, their containers, or how they are presented.