Here are some questions that Canadian businesses should ask about trademarks. This is general simplified information, not specific legal advice.
There are several restrictions on what can be registered as a trademark. For example, it can’t be confusingly similar to a previous registration. Even an unregistered mark can in some circumstances have priority. Another example is that there are restrictions on registering people’s names as trademarks.
Yes. Many things can be trademarked, including taglines, logos, colours, shapes, sounds, scents, and textures. Some of those will, however, require proof that the mark is already recognized by the public, which can be challenging to do.
If you use your corporate name as a brand for your products, yes. But the tests to register a trademark are narrower than the test to obtain a corporate name. So, it is possible to have a corporate name that you can’t register as a trademark. If you are incorporating a new company and want trademark protection for the name, make sure it can actually be registered as a trademark.
Trademarks are supposed to be memorable, not descriptive. They are so consumers will link the product connected to the mark to you and not your competitor. Indeed, the Trademarks Act says one can’t register a mark that is “… clearly descriptive or deceptively misdescriptive in the English or French language of the character or quality of the goods or services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin.” So, you can’t register “cold ice cream.”
A trademark has to be distinctive to be registered. That means the mark has to be something unique that others selling the same product might not think to use as a brand. In addition to the registrability issue, strong, unique trademarks do a better job of distinguishing your products from others.
You don’t have to, but it is easier to stop a competitor from using a confusingly similar brand if it is registered. Unregistered, (aka common law) marks can be enforced against a competitor using a confusingly similar brand, but the protection is narrower and harder to prove.
Yes, but only if there is a written license in place where you have control over the other party’s use of your mark. Ownership and use of a trademark must mesh. If it doesn’t, the owner can lose rights to the trademark.
The fact that the corporations are related doesn’t help the ownership/use issue. They need a written agreement the same as if they were unrelated entities.
No. If you sell your product in other countries you have to register it in those countries.
You can apply yourself. But a trademark agent can advise on registrability, do trademark searches to see if there are already confusingly similar marks registered, and help describe the uses to make sure they give the right protection and will be palatable to the examiner.
You don’t have to, but it is a good idea. “TM” can be used on an unregistered or a registered mark. ® shouldn’t be used unless it is actually registered.
Trademark registrations last for 10 years but can be renewed every 10 years.
Yes. Examples include not using it with the registered uses, not using it within the legal definition of “use”, not using it exactly as registered, and letting others use it without permission.
There is no time limit on registering a trademark. But sooner is better as it reduces the risk that someone else might apply for a similar mark before you do.
Download our trademarks guide that includes information about obtaining a trademark registration and protecting it after registration.
