- The Trademark Application Process
- Why Register Your Trademark?
A common misconception about trademark use in Canada is that you are required to register a trademark before using it in the marketplace. Unlike business and corporate names, trademarks do not need to be registered with the government for their use to be legal (although conducting a search is advisable in order to minimize the risk of infringing another trademark). Your rights in a trademark are legally protected through common law by the very fact that you are actually using the trademark. However, the protection that you have through the common law rights you build in your trademark is limited compared to the rights you acquire by registering your trademark. A trademark registration provides greater protection in terms of strength, scope and efficacy.
THE ADVANTAGES OF REGISTERING YOUR TRADEMARK
An important advantage of registration is that your trademark rights extend across Canada. You could be using a registered trademark in Mississauga, Ontario and still have grounds to enforce your rights against a confusing trademark in Vancouver, British Columbia. However, your rights in an unregistered trademark are limited to the geographical area in which it has become well known. Therefore, if you have built a reputation in your trademark in a local neighbourhood in Mississauga but not elsewhere, you can only enforce your rights against a confusing trademark in the same neighbourhood.
Registration also gives you valuable strategic advantages if you need to enforce your rights in court. If you have an unregistered trademark, the legal basis for bringing a court action against another trademark is passing-off since your rights are protected by common law only. If you have a registered trademark, your rights are protected by statute law, i.e. the Trade-marks Act, in addition to common law, thereby providing additional grounds on which to base your lawsuit.
And bringing an action based on passing off poses its own set of challenges. One drawback is the geographical limitation discussed in the previous paragraph — your trademark rights only extend to the area in which you have built a reputation or goodwill whereas the Trade-marks Act protects your trademark rights throughout the country. Another related drawback of passing-off actions is that the burden is on you to prove that you are the entitled owner of your trademark by establishing that you have actually built a reputation or goodwill associated with the trademark, which is not an easy task. However, if you have a registered trademark, you are automatically deemed to be the entitled owner of the trademark unless the other side can prove otherwise.
Finally, by registering your trademark, you have a level of security that you are not infringing another person's trademark. The entire application process acts as a screen to filter out your trademark if it is confusing with another trademark, whether through the examiner's search, the advertisement period, or the searches you have conducted beforehand. If there are any confusingly similar trademarks with prior rights that are not spotted, it is likely because they are unregistered and obscure. Along the same line, your trademark registration gives the public notice that you own that particular trademark. You are more likely to be spotted as a red flag in another person's clearance search, and the Trade-marks Office will object to the registration of a trademark that it considers to be confusing with your trademark.