Trade-Marks
2. How to Acquire and Protect Trade-Mark Rights
(b) Trade-Marks under the Trade-Marks Act
In order to regulate trade-marks and their protection, the Parliament of Canada enacted the Trade-marks Act, which Act provides a consistent and predictable system for obtaining and enforcing trade-mark rights throughout Canada. This legislation has created a regime under which you can, by following through on the registration of your trade-mark, obtain exclusive nation-wide rights to the trade-mark, which rights can be invoked to prevent others from using trade-marks which are confusingly similar to yours in association with similar products or services. The system provides numerous advantages for trade-mark owners over the situation which exists at common law. Some of these advantages will be discussed below.
Registration under the Trade-marks Act will be awarded to the first trader to "adopt" the trade-mark in Canada. Adoption can take place under the Trade-marks Act by either "use" of the trade-mark (as at common law), or by filing an application for registration of the trade-mark. The bases for filing an application for registration under the Trade-marks Act include, actual use in Canada, making known in Canada, use and registration abroad, and most importantly for present purposes, proposed use. Thus, unlike at common law, filing an application under the Trade-marks Act based on proposed use gives you a date of adoption for your trade-mark before you even start to use the mark! This is an advantage that you cannot obtain at common law, since common law rights in a trade-mark can, as discussed under the previous heading, only be acquired at common law through actual use. Accordingly, where you are planning a product launch and wish to heavily promote a trade-mark in the context of such launch, filing for registration under the Trade-marks Act on the basis of proposed use provides some protection against would-be copiers for your investment in the product launch, and, as discussed more fully below, reserves your priority to similarly protect your proposed use trade-mark in other countries for up to six months from the date of your first application for registration in Canada. After your application has been filed, you can rely on your filing date to determine which of you has the prior right to registration of the subject trade-mark.
Additionally, if you register your trade-mark under the Trade-marks Act, it is much easier to enforce your trade-mark against third parties, as your reputation in relation to that trade-mark (as referenced under the previous heading) is presumed to extend throughout Canada. A valid trade-mark registration will allow you to prevent other traders of similar products or services anywhere in Canada from infringing your trade-mark, even if you are only using your trade-mark locally. Thus, you are safeguarding opportunities for the future expansion of your business throughout Canada. Furthermore, if someone does use your trade-mark, or a trade-mark which is confusingly similar to your trade-mark, you do not need to sue him/her in the provincial court system as you would at common law; instead you can seek a remedy in the Federal Court of Canada for infringement of your registered trade-mark. This may allow you, under certain circumstances, to sue an infringer operating in a different province from your own home province, and that can save considerable trouble and expense.
Lastly, if you are going to franchise or license your trade-mark, registration is essential. Without registration of your trade-marks, you must rely on the terms of the contract with your licensees to control their use of the trade-marks. As the various licensees continue to use your trade-mark in their locations, the purchasing public in those localities may come to think of the licensees as the source of the products, and may not be aware of you at all. If one of your licensees in a certain area stops carrying on business, and your trade-mark is not being used in that area, people could argue that you have abandoned your trade-mark rights in that area. As discussed above, this will limit your ability to prove the geographical scope of your reputation when attempting to stop infringers. Moreover, your contract may state that the goodwill created through use of your trade-mark should accrue to you, but if the contract is terminated and your ex-licensees continue to use your trade-mark outside the contract, there will be more than one ultimate source of products or services provided under the same trade-mark. This situation is incompatible with the fundamental principle that a trade-mark functions to distinguish the wares and services of one trader from those of others. If the trade-mark no longer, in fact, indicates one single trader, it has lost its distinctiveness, and cannot be enforced by anyone. In this situation the original owner may be deemed by the courts to have abandoned his/her original trade-mark rights.
A trade-mark Registration is valid for fifteen (15) years from registration, and can be renewed every fifteen years, indefinitely, upon the payment of the required renewal fees.