Ryan K. Smith

A trademark is a mark, which distinguishes one party’s wares and/or services from the wares/and or services of any other party. It is the primary role of a trademark to clearly communicate and certify to the average consumer the source or origin of a product and/or service. A trademark may also protect the goodwill or reputation in a product or associated with a service.

1.1 What is an unregistered trademark?

An unregistered trademark is a mark which an owner uses for the purpose of distinguishing his wares and services from the wares and services of another party and which has not been registered under the Trademarks Act. An unregistered trademark is not entitled to any of the rights a registered trademark owner has under the Trademarks Act.

1.2 What rights does an owner of a registered trademark have?

The owner of a registered trademark has the following rights in relation to the trademark registration: (i) exclusive right to the use the trademark throughout Canada in respect of the wares and services set out in the registration; (ii) the right to stop the use of a trademark or trade name, which is confusing with the trademark registration; (iii) the right to stop the use of a registered trademark by another party, which is likely to have the effect of depreciating the value of the goodwill attaching to the registered trademark; and (iv) the right to license others to use the trademark.

The Right to Exclusive Use

The owner of a registered trademark has the right to exclusive use of such trademark throughout Canada in association with the wares and services listed in such registration. The Trademarks Act defines “use” to mean in association with: (i) wares – if at the time of transfer or possession of the wares, the trademark is marked on the wares themselves or on the packages of the wares; (ii) services – if the trademark is used or displayed in the performance or advertising of those services; (iii) export – if the trademark is marked in Canada on wares or on the packages in which they are contained, when the wares are exported from Canada.

The Right to Stop Use of Confusing Trademarks

The owner of a registered trademark has the right to stop anyone, who is not entitled to use the registered trademark, who sells, distributes or advertises wares or services in association with a confusing trademark or trade name.

A trademark or trade name is confusing with another trademark or trade name if the use of the first mentioned trademark or trade name would cause confusion with the last mentioned trademark or trade name. Any determination on whether confusion exists must consider the following five factors:

(i) the inherent distinctiveness of the trademarks or trade names and the extent to which they have become known;

(ii) the length of time the trademarks or trade names have been in use;

(iii) the nature of the wares, services or business;

(iv) the nature of the trade; and

(v) the degree of resemblance between the trademarks or trade names in appearance or sound in the ideas suggested by them.

The Right to Stop Depreciation of Goodwill

The owner of a registered trademark has the right to stop another person from using its registered trademark, if the other person’s use is likely to have the effect of depreciating the value of the goodwill attached to the registered trademark (“use” is as defined in The Right to Exclusive Use above).

The Right to License Use of the Trademark

The owner of a registered trademark has the right to license the use of the trademark to others, so that the other party may use the trademark to the extent permitted by the license agreement.

1.3 How is a trademark different from a trade name?

A trade name is the name under which a business is carried on, regardless of whether the business is an individual, partnership, or corporation. A trademark is a mark used for the purpose of distinguishing wares and services from the wares and services of others.

2.0 What does a trademark registration protect?

2.1 What forms may a registered trademark take?

2.2 What are wares and services?

2.0 What does a trademark registration protect? Back to Top

A trademark registration protects the use of the registered trademark in association with the wares and services as specified in the trademark registration for the purpose of distinguishing the wares and services of the owner of the registered trademark from the wares and services of others.

A trademark registration protects the right of the owner of a trademark registration to exclusive use of the registered trademark across Canada, the right to stop the use of a confusing or identical trademark in Canada, the right to license the trademark, and the right to use the Canadian trademark registration as the basis for a trademark registration in a foreign country.

2.1 What forms may a registered trademark take?

A trademark may be registered in at least six forms: (i) word; (ii) phrase or slogan; (iii) design or logo; (iv) distinguishing shape; (v) certification mark; and (vi) official mark.

Word Mark

A word mark form of a trademark means that the trademark is made up of a word or a combination of words, e.g. Exxon.

Phrase or Slogan

A phrase or a slogan form of a trademark means that the trademark is made up of a group of words, which are used to persuade a consumer to purchase goods and/or services, (e.g.) Make Things Better.

Design Mark or Logo Mark

A design mark form of a trademark means that the trademark is made up of a drawing or stylization, such as a logo, which may include a word or words, (e.g.) the BMW logo.

Distinguishing Shape

A distinguishing guise form of a trademark means that the trademark is made up of the actual shape of the product or its container and the packaging of wares or wrapping mode of wares, (e.g.) the shape of a Toblerone chocolate bar.

Certification Mark

A certification mark form of a trademark means that the trademark is used in association with wares and/or services to communicate that the wares and/or services satisfy a certain standard (e.g.) manufacturing process or quality of component parts. An example of a certification mark is “CSA STANDARD”, which may be used to indicate that the wares so marked comply with the relevant specifications.

Official Mark

An official mark form of a trademark may only be registered by government departments, universities, public authorities, and certain specified institutions. No one, save the registrant of an official mark, may use a registered official mark.

2.2 What are wares and services?

One may think of the word “ware” simply as “product”. As “service” is not defined in the Trademarks Act, it has been given a broad and general interpretation. What constitutes a service will be determined on a case-by-case basis. Further, a service associated with a trademark may be incidental and ancillary to the sale of a ware marked with a trademark. When a trademark application is made, the applicant must list the wares and/or services, with which the trademark is or will be used.

3.0 How do you apply for a trademark?

3.1 What are the steps in the trademark application process?

3.2 What is a preliminary trademark application search?

3.3 On what basis may a trademark application be made?

3.4 What information is required to make a trademark application?

3.0 How do you apply for a trademark? Back to Top

An application for a trademark registration is made to the Trademarks Office. Before the proposed trademark is registered, it is subject to an internal and external review.

Internal Review

The internal review takes place at the Trademarks Office. An examiner will review the application against any registered trademarks, applications made prior to the relevant application, and against the requirements of the Trademarks Act. The following lists some of prohibitions to any trademark application:

(i) a trademark may not be primarily merely a name or surname of an individual who is living or has died within the preceding thirty years;

(ii) a trademark may not be clearly descriptive or deceptively misdescriptive in English or French of the character or quality of the wares 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;

(iii) a trademark may not be the name in any language of any of the wares or services in connection with which it is used or proposed to be used;

(iv) a trademark may not be confusing with a registered trademark;

(v) a trademark may not be registered if it is prohibited by section 9 of the Trademarks Act, which concerns official marks;

(vi) a trademark may not be registered if it is prohibited by section 10 of the Trademarks Act, which concerns terms standard in an industry;

(vii) a trademark may not be registered if it is used to describe a plant denomination;

(viii) a trademark may not be registered if it is in whole or in part a protected geographical indication, i.e. Champagne, where the wine or spirit does not originate from such geographical area.

External Review

After the Trademarks Office has confirmed that the trademark satisfies the conditions for registration under the Trademarks Act, the proposed trademark is advertised in the Trademarks Journal. After the proposed trademark has been advertised, during the two months following the advertisement any person may oppose the registration of the mark on any of the following grounds: (i) the application does not conform to the requirements of section 30 of the Trademarks Act; (ii) the trademark is not registrable; (iii) the applicant is not the person entitled to the registration of the trademark; or (iv) the trademark is not distinctive. If two months expire after advertisement in the Trademarks Journal, the trademark application is usually allowed and the trademark may be registered.

3.1 What are the steps in the trademark application process?

There are six stages in the trademark application process:

(i) Application – the applicant must assemble all the necessary information required of a trademark application;

(ii) Formalization – if all the necessary information required of a trademark application is present, the Trademarks Office will formalize the trademark application;

(iii) Examination – the Trademarks Office will determine whether the trademark application is registrable in accordance with the Trademarks Act at this stage;

(iv) Advertisement – the trademark application will be advertised in the Trademarks Journal;

(v) Allowance – if there is no reason why the trademark application should not be registered under the Trademarks Act, the Trademarks Office will allow it; and

(vi) Registration – upon a filing of the required fee, the trademark application becomes registered.

3.2 What is a preliminary trademark application search?

A preliminary trademark application search is conducted before a trademark application is made. The purpose of the preliminary search is to provide information to the potential applicant, which may be useful in determining the degree of success an application for a trademark may have. A preliminary search is not necessary. Furthermore, the conclusion of any party, who has made a preliminary search, may be completely different from the conclusion of the Trademarks Office or Trademarks Opposition Board.

3.3 On what basis may a trademark application be made?

A person may base his application for a trademark on 3 different grounds: (i) first use; (ii) making known; and (iii) proposed use.

First Use

Any person who first uses a trademark in Canada in the ordinary course of business is entitled to adopt and register the trademark in Canada. “Use” has the definition attributed to it in the Trademarks Act (see Section 1.1 – The Right to Exclusive Use above).

Making Known

Where a trademark has not been used in Canada but has become known in Canada, such making known may be a sufficient basis upon which an applicant may obtain a trademark registration.

Proposed Use

If a trademark has not been used or made known in Canada, an applicant may still file a trademark application on the basis that the applicant will use the trademark at a later date in accordance with the Trademarks Act.

Foreign Trademark

An applicant may also file an application in Canada on the basis of a trademark application in a foreign country. Where an application for a trademark has been made in a foreign country and an application is made for the same trademark in Canada on the basis of the foreign application within six months of the foreign trademark application, the date of the trademark application in Canada shall be deemed to be the same date as the foreign trademark application.

3.4 What information is required to make a trademark application?

In every trademark application, there is certain essential information, which is needed to file an application. If such information is not included in the trademark application, the application will not be formalized and the Trademarks Office will not review it. The information, which every trademark application must have, is contained in the following list:

(i) trademark – if in word, phrase or slogan form, the word, phrase or slogan; if in design form, a .tiff file of the design; and if in distinguishing shape form, a .tiff file of the distinguishing shape;

(ii) whether the trademark application is based on use, making known, proposed use, or a foreign trademark application;

(iii) whether the trademark claims any specific color in association with the trademark;

(iv) the wares and/or services with which the trademark will be used;

(v) in the case the trademark has already been used, the date from which the trademark has been used with specific wares and/or services;

(vi) statement where the applicant declares that he believes he is entitled to the trademark.

(vii) name of the trademark owner;

(viii) address of the owner;

(ix) the representative for service; and

(x) the necessary fee.

4.0 Who owns a trademark registration?

4.0 Who owns a trademark registration? Back to Top

The applicant for a trademark becomes its first owner if the trademark is registered. An owner may be an individual or corporation. An applicant for a trademark should carefully consider on what basis he is making the application and whether he is entitled to the use of the trademark.

5.0 How long is a trademark registration effective?

5.0 How long is a trademark registration effective? Back to Top

A trademark registration is effective for fifteen years following its registration date. So long as the trademark is being used, a trademark may be indefinitely renewed for further periods of fifteen years through payment of the renewal fee to the Trademarks Office.

6.0 How may I permit others to use my trademark?

6.0 How may I permit others to use my trademark? Back to Top

There are two ways that the owner of a trademark may enable another party to use his trademark: (i) assignment of the trademark; and (ii) licensing of the trademark.

Assignment

A trademark may be assigned in writing along with its goodwill from the trademark owner to the new owner. It is highly recommended that a trademark assignment be in writing, although it is not absolutely essential. A trademark assignment must not be registered in the Trademarks Office in order to be effective. A trademark can only be assigned by the trademark owner. If a trademark owner assigned its trademark to a second party, who did not register the assignment, and then subsequently to a third party, who did register the assignment, such registration would be invalid because the former trademark owner had nothing to assign to the third party.

Licensing

The Trademarks Act permits the licensing of a trademark, registered or unregistered, if the owner of the trademark under the license agreement has direct or indirect control of the character or quality of the wares in association with which the trademark is used. No registration of the licensed use is necessary, however one may register a license agreement with the Trademarks Office. Although it is preferable to have a license agreement in writing, it is not strictly required. If the owner of the trademark does not exercise the required level of care and control over the licensed use of the trademark, the trademark may lose distinctiveness, which may ultimately lead to the invalidity of the trademark registration.

The Trademarks Act states that if proper public notice is given of the licensing of the trademark, then a rebuttable presumption arises that such use of the trademark by a licensee complies with the Trademarks Act. Such presumption may be very useful where proceedings have been initiated, which challenge the validity of the trademark. Public notice may take the form of a mark on wares and/or with services, which indicate that the trademark is owned by one party and used under license by another party.

7.0 When is a trademark infringed?

7.1 Who may initiate an action alleging trademark infringement?

7.2 What is passing off?

7.3 What is passing off under the Trademarks Act?

7.4 What is common-law passing off?

7.0 When is a trademark infringed? Back to Top

There are three potential causes of action under the Trademarks Act for infringement of a registered trademark:

(i) section 19 prohibits a user from using a trade-mark, which is identical to a registered trademark, in association with wares and services, which are identical to those of a registered trademark;

(ii) section 20 prohibits a person from selling, distributing, or advertising wares or services in association with a trademark or trade name, which is confusing with a registered trademark; and

(iii) section 22 prohibits any person from using a registered trademark in a manner that is likely to have to effect of depreciating the goodwill attached to it.

7.1 Who may initiate an action alleging trademark infringement?

Only the owner of a registered trademark or a licensee, provided that certain requirements are met under the Trademarks Act, may institute an action alleging trademark infringement.

7.2 What is passing off?

Passing off means the activity in which one party misrepresents his goods and services as that of another party. Passing off is prohibited under the common-law of Canada and also under section 7 of the Trademarks Act.

7.3 What is passing off under the Trademarks Act?

Under the Trademarks Act, anyone is prohibited from doing the five following actions:

(i) making a false or misleading statement tending to discredit the business, wares or services of a competitor;

(ii) direct public attention to his wares, services or business in such a way as to cause or be likely to cause confusion in Canada with the wares, services, or business of another;

(iii) pass off other wares and services as and for those ordered or requested;

(iv) make use, in association with wares or services, of any description that is false in a material respect and likely to mislead the public as to: (1) the character, quality, quantity or composition; (2) the geographical origin; or (3) the mode of the manufacture, production, or performance, of the wares or services; or

(v) do any other act or adopt any other business practice contrary to honest industrial or commercial usage in Canada.

7.4 What is common-law passing off?

In order for passing off to be established at common-law, the plaintiff must prove the following three things:

(i) Reputation or Goodwill – the plaintiff must prove a distinctive reputation or goodwill in the marketplace;

(ii) Misrepresentation – there must be evidence that the defendant misrepresented his goods and/or services as originating from the plaintiff; and

(iii) Damage or Likelihood of Damage – the plaintiff must show that the plaintiff has suffered damage or is likely to suffer damage because of the misrepresentation.

8.0 What are the remedies to trademark infringement?

8.0 What are the remedies to trademark infringement? Back to Top

The remedies to trademark infringement are very similar under the common-law and under the Trade-marks Act. Section 53.2 of the Trade-marks Act contains generally a codification of the common-law remedies for trademark infringement and passing-off. Section 53.2 states:

Where a court is satisfied on application of any interested person, that any act has been done contrary to this Act, the court may make any order that it considers appropriate in the circumstances, including an order providing for relief by way of injunction and the recovery of damages or profits and for the destruction, expropriation or other disposition of any offending wares, packages, labels and advertising material and of any dyes used in connection therewith.

As this section does not restrict the remedies a court may order, a provincial or federal court would also be able to order common-law and equitable remedies.

9.0 What are some exemptions to the enforceability of a trademark registration?

9.1 Defective registration

9.2 Loss of distinctiveness in the trademark

9.3 Unlicensed use of trademark causing loss of distinctiveness

9.4 Non-use of trademark

9.5 Acquiescence to use

9.6 Expiry of limitation period

9.0 What are some exemptions to the enforceability of a
trademark registration? Back to Top

The owner of a registered trademark may not be able to enforce its trademark registration to prevent the conduct of certain activity because of any of the following:

(i) a defective registration;

(ii) a loss of distinctiveness in the trademark;

(iii) unlicensed use of the trademark causing loss of distinctiveness;

(iv) non-use of the trademark;

(v) acquiescence to use;

(vi) expiry of limitation period

9.1 Defective registration

An owner of a registered trademark may not use an invalid trademark with which to enforce his rights under a trademark registration. A trademark registration may be invalid for any of the following reasons: (1) the trademark was not registrable under any of section 12 to 15 of the Trademarks Act; (2) the abandonment of the trademark; and (3) the current owner of the registered trademark or his predecessor in title was not entitled to secure the registration.

9.2 Loss of distinctiveness in the trademark

Although a trademark registration may have been perfectly enforceable and valid upon its date of registration, no or improper policing of the registered trademark may have caused it to lose its distinctiveness during any period following its registration. Distinctiveness may be lost when the registered trademark is not exclusively associated with the wares, services, and business of the owner of the registered trademark.

9.3 Unlicensed use of the trademark causing loss of distinctiveness

Where a registered trademark is improperly licensed, a licensee may use a registered trademark in a manner which causes it to loss distinctiveness. By way of example, where a licensee uses a registered trademark in association with wares or services not included in the trademark registration or where a licensor does not maintain care or control over the quality of the wares or services with which the licensee uses the registered trademark, the registered trademark may suffer a loss to its distinctiveness.

9.4 Non-use of trademark

If a trademark is not used generally for more than three (3) years, then the trademark may be expunged from the trademark registry because of non-use.

9.5 Acquiescence to use

Where a person infringes a trademark registration multiple times over a period of time without any response from the owner of the registered trademark, then it is possible that, were the owner of the registered trademark to sue at some future date for trademark infringement, the owner might be met with a successful defense of acquiescence.

9.6 Expiry of limitation period

Where an infringement of a registered trademark occurs, yet the registered owner does not initiate an action against the infringer within the time period specified by the relevant limitation period, then any suit on the basis of such trademark infringement will not be permitted.

Legal Disclaimer Back to Top

This document is provided for informational purposes only. The information contained in this documents represents the current view of Ryan Smith on the issues discussed as of the date of publication. Because the law changes, this reference guide should not be interpreted to be a commitment on the part of Ryan Smith and Ryan Smith cannot guarantee the accuracy of any information presented.

Information contained in this reference guide is provided “as is” and “as available” without warranty of any kind, either express or implied, including but not limited to the implied warranties of merchantability, fitness for a particular purpose and freedom from infringement.

The user assumes the entire risk as to the accuracy and the use of this document. This document may be copied and distributed subject to the following conditions:

all text must be copied without modification and all pages must be included;
all copies must contain Ryan Smith’s copyright notice and any other notices provided therein; and
this document may not be distributed for profit.

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Ryan K. Smith

Trademark Law: Reference Guide

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