Trade Marks and Trade Names

FROM: PAUL SANDERSON

RE:   TRADE-MARKS AND TRADE NAMES

I.    GENERAL

In order to acquire rights a trade name or trade-mark must be distinctive, not confusing with another trade-mark and must be used to distinguish particular services or wares in the marketplace.

The key concept is that the name must not be confusing with another name. Therefore a thorough name search should be undertaken before using any name or logo in an attempt to avoid possible legal entanglements.

Unregistered names which are used in the marketplace acquire common law rights as a trade name or trade-mark on the basis that they are recognized by the public in any given geographic territory. However, there are distinct advantages to registering a trade-mark or trade name, although either because of lack of knowledge or because of the costs involved, many choose not to register their valuable trade-marks or trade names. Those advantages are outlined below.

II.   ADVANTAGES OF REGISTRATION

Only registered marks acquire exclusive rights nationally upon registration. Unregistered marks would only acquire national protection if they were used nationally. Unregistered marks, in addition, cannot take advantage of the procedures which a registered mark acquires with respect to trade-mark infringement actions. They are subject to the vagaries of common law actions such as "passing off". Once the name is registered it is presumed to be valid and in an infringement action, the registrant is presumed to be the owner of the trade-mark.

Once registered and upon use, one is granted the exclusive right to use the name in association with the registered wares and services in Canada for fifteen (15) years. The registration can be renewed perpetually by paying renewal fees but like a business, a trade-mark should be regularly reviewed and updated.

III.  CRITERIA FOR REGISTRATION

The name or logo must meet the criteria of being registrable under the Trade-marks Act (the "Act"). An application for registration can be made on the following grounds or any combination of these grounds:

(1)   it is used in the ordinary course of trade and associated with a particular ware or service;

(2)   on the basis of proposed use, although use must be commenced before registration is granted;

(3)   it has been registered and used in a foreign country.

(4)   on the basis of being well-known in Canada, even if the foreign trade-mark is not used in Canada.

IV.   REGISTRATION PROCEDURE IN CANADA AND THE UNITED STATES OF AMERICA AND COST OF REGISTRATION

A.    Canada

The registration procedure in Canada consists of the following:

(1)   The search of the Trade-mark Registrar to ascertain whether or not there are potentially confusing trade-marks and trade names. Note that the computer search is not exhaustive and also a search, for example, through telephone directories is often advisable in addition to the computer search.

(2)   The application is prepared and is either based on use, proposed use or a combination of the two.

(3)   The application is filed with the trade-mark Registrar in order to get a priority date. After that, the Registrar will send a letter with respect to receipt of the application and will review the application with respect to any technical deficiencies in the draft application in order to ensure that the application complies with the regulations of the Trade-marks Act.

(4)   Assuming there are no problems with the application and no third party or competing trade-mark is cited in an office action by the Registrar against the trade-mark application, then the Registrar will advertise the trade-mark in the Trade-marks Journal.

(5)   If there has been no objection within sixty (60) days of the date of advertisement in the Trade-marks Journal, a Notice of Allowance will be sent to the Applicant or the Trade-mark Agent for the Applicant.

(6)   If the application was based on proposed use, not on actual use, a Declaration of Use is required. In order to be registrable, trade-marks have to be used prior to gaining an actual registration. This Declaration must be filed on a timely basis after receiving the date of the Notice of Allowance.

(7)   The timing of the filing of a trade-mark application can be crucial in certain circumstances, for example, if there are potentially confusing and conflicting trade-marks.

(8)   Note it is a priority registration system and that the filing date can be absolutely critical. In some cases your trade-mark rights can be lost if your application is preceded by a potentially conflicting and confusing trade-mark application.

B.    United States of America and Other Territories

The procedure in the United States is similar to the Canadian system but it would be quite misleading to say that the U.S. system is identical. It is not. There are a number of distinct differences. In order to fully protect a trade-mark or trade name throughout the world, one must register the trade-mark or trade name on a territory-by-territory basis. Each territory has different laws and regulations and costs for doing so.

V.    COSTS OF REGISTRATION

A.    Canada

(1)   The government fees payable are currently $300.00 on filing the application and $200.00 on registration.

(2)   Legal fees for drafting the application and corresponding with the Trade-marks Office are in addition to the disbursements referred to in paragraph (1) above. The total of fees and disbursements for a routine Canadian trade-mark application is likely to be $1500.00 – 2,000.00.

(3)   It takes up to 24 months generally to have a trade-mark registered if there are no problems encountered and the application is routine.

(4)   The legal costs set out in paragraph (1) and (2) above can be amortized over a period of time. You can contact our office to arrange a retainer and payment schedule.

B.    United States

(1)   The fees payable for our U.S. trade-mark regististry search (which is normally done with the assistance of a U.S. Trade-mark Agent who can be hired by a Canadian law office) vary widely and an initial quote would be obtained by our registered U.S. trade-mark agent.

(2)   The approximate cost of a U.S. application and registration for a trade-mark inclusive of fees and disbursements is about $2,500.00 – 3,500.00 U.S. depending on the complexity of the application.

(3)   The entire search, application and registration procedure typically takes up to 18 months.

The above is summary advice only and in specific fact situations skilled legal advice should be obtained.

PAUL SANDERSON

Barrister & Solicitor