Trade-Marks
2. How to Acquire and Protect Trade-Mark Rights
(a) Trade-marks at Common Law
Historically, the only way to acquire rights to a trade-mark was by selecting a mark not already used by others in the relevant trade, and then using it as a trade-mark. As you used your trade-mark, consumers would start to identify the mark as indicating the products or services of your particular business, and you would establish a reputation under that trade-mark. Thus, the trade-mark would in this manner, become a symbol of your business as a source of a certain type of product or service. This is called acquiring common law trade-mark rights. It was possible to protect and enforce the trade-mark at common law only to the extent to which you could demonstrate that your product or service had become known under the trade-mark.
It is still possible to acquire and enforce trade-mark rights in this manner. If you rely upon the common law, then, in order to prevent someone else from using your trade-mark, or a mark that is confusingly similar to yours, you must be able to show that your reputation (as represented by the trade-mark), extends over a certain geographical area. You must also be able to show that the other party's use of their mark in "your" geographical area will cause confusion amongst the relevant sector of the purchasing public, and that you will suffer damage as a result of their activity.
For example, if you are using a trade-mark in Southern Ontario in association with a product, you will eventually establish a reputation in all or part of that area. If you later learn that someone in Calgary, Alberta has copied your trade-mark, and is using the trade-mark for essentially the same type of product, then you are no doubt, going to want to stop them, assuming you may someday want to expand your business into Alberta. Relying upon common law principles, you could not prevent their use of your trade-mark in Alberta if you cannot prove that you currently have a reputation under your trade-mark for the product in Calgary!
Taking this example further, even if you think that your reputation in the trade-mark has spread beyond Southern Ontario, it may not be easy to prove the extent of your reputation, that the offending trade-mark was used in "your" territory, or that you have suffered damage resulting from the activity of another trader, all with the degree of certainty required by our courts. It may take several days, or even weeks, at trial in an Alberta court (at considerable expense), to lead the necessary evidence to lay the groundwork to establish the scope of your reputation, and the damage which has resulted from the activities of another party within the area of your reputation. Moreover, each time you are forced to sue a new transgressor, you will be required to prove your reputation all over again.
Some people give little thought to the important role trade-mark(s) play in marketing their business, and so they continue to rely upon the common law to protect their trade-marks. If they think of it at all, they view the hardships of protecting their interests at common law as simply one more bridge to cross when they come to it. A major problem with this approach is that someone else may already have built a similar bridge by the time you attempt to cross a distant river. There is a better way.