In Canada, trademark rights can be acquired for both registered and unregistered trademarks. While a trademark does not need to be registered to be protectable, registration of a trademark provides significant benefits for the trademark owner including:
- nationwide protection across Canada for 15 years;
- the right to exclusive use of the trademark in Canada;
- evidence of exclusive entitlement to the trademark in Canada;
- an enhanced ability to enforce trademark rights in Canada; and
- an enhanced ability to license trademark rights to others in Canada.
Altogether, trademark registrations reward trademark owners by increasing the value of their brand and business and by providing stronger rights for enforcing their trademark which better enables their business to grow.
Nationwide Trademark Protection across Canada for 15 Years
A trademark registered in Canada is protected throughout the country. As long as the business continuously uses the trademark in connection with the goods and services with which the trademark is associated, the mark is protected. The registration of a trademark provides the exclusive right to use the trademark in connection with the goods and services associated with the trademark across Canada, without any geographical restrictions.
In contrast, the protection of an unregistered trademark is limited to the geographical areas where the trademark is used and known. That is, an unregistered trademark is only enforceable where the trademark has gained a sufficient reputation and proving the existence of a sufficient reputation is a much more costly exercise than having the foresight to have obtained a trademark registration before enforcement of trademark rights is required.
Canadian trademark registration is valid for up to 15 years and can be renewed indefinitely, provided that the trademark is in use in the marketplace and remains indicative of its owner. Upon payment of a renewal fee, the trademark can be renewed for another 15-year term. The renewal fee is the only requirement to renew a registered trademark. Filing a declaration of continued use is not necessary.
Right to Exclusive Use of the Trademark in Canada
Registering a trademark gives the trademark owner statutory exclusive rights to use the trademark for the goods and services with which it is associated in Canada. This exclusive entitlement conferred upon the trademark owner to use the trademark allows the trademark owner to prevent others from using the same or a confusingly similar trademark.
To be afforded its exclusive right, a trademark owner can apply to register its trademark even before beginning to offer its goods or services associated with the mark to the public. In contrast, common law rights to a trademark are conferred upon an unregistered trademark owner only after use over a period of time and becoming well known amongst the public.
Evidence of Exclusive Entitlement to the Trademark in Canada
A registered trademark is entered in Canada’s Register of Trademarks. This Register is the record of all trademarks that have been applied for or registered in Canada.
Registration of a trademark, through its inclusion in the Register, serves as a public notice that the trademark is protected and that the trademark owner has a claim to exclusivity. This registration provides direct evidence of ownership and once a trademark is registered, the trademark owner receives a certificate of registration that can be used as proof of ownership.
If a dispute arises, a registered trademark owner does not need to first prove ownership; rather the onus is on the challenger to demonstrate the registered trademark owner is not so entitled to the trademark. In contrast, a dispute arising in the context of an unregistered trademark may lead to an expensive and lengthy legal dispute to determine whether the claimant even has enforceable trademark rights.
Enhanced Ability to Enforce Trademark Rights in Canada
Once a trademark is registered, the same or a confusingly similar trademark cannot be registered in Canada. Accordingly, registering a trademark can dissuade others from attempting to register the same or a confusingly similar trademark. In the event that another adopts and uses the same or a confusingly similar trademark, the owner of the registered trademark has access to greater enforcement options than the owner of an unregistered trademark.
Trademark causes of action are available to a registered trademark owner if a third party uses: 1) an identical trademark associated with identical goods or services; 2) a trademark that creates confusion with the registered trademark; or 3) a trademark in a manner that is likely to depreciate dang ky nhan hieu hang hoa the value of the goodwill associated with the registered trademark. If any of these events arise, the owner of a registered trademark can enforce its exclusive rights to the trademark.
The remedies available against a party who infringes a trademark or depreciates the value of its goodwill include injunctive relief, monetary damages or profits, and an order for the destruction of the infringing articles. Moreover, a registered trademark is a defense to passing off claims by others.
In contrast, the owner of an unregistered trademark may only enforce its trademark rights through a claim of passing off. To establish passing off, the unregistered trademark owner must establish that: 1) it has sufficient goodwill or reputation in its trademark; 2) the other party has misrepresented its goods or services in a way that leads to confusion with those of the trademark owner, and 3) the owner has suffered or is likely to suffer damage.
Accordingly, the additional legal grounds available to registered trademark owners give them both stronger and broader enforcement tools for protecting their brand than are available to unregistered trademark owners.
Enhanced Ability to License Trademark Rights in Canada to Others
A brand protected through a registered trademark is a valuable business asset. Although both registered and unregistered trademarks may be licensed, the value of the license to the licensee is greater when then trademark has been registered as the trademark owner’s rights to the mark are stronger and more easily enforced against others.
A trademark owner can license its trademark for use by others, either by providing an exclusive or non-exclusive license. It is important however that the trademark owner retains control over the character or quality of the goods or services offered by the licensee in association with the trademark or else it risks losing its rights.
Trademark licensing can be used to facilitate the growth of a brand by either expanding the scale of operations or going outside of the trademark owner’s usual sphere of activity thereby increasing the brand’s reach. Furthermore, trademark licensing may be done for license fees payable from the licensee to the licensor providing a revenue stream over and above the increase in brand value due to the licensee expanding the trademark’s use and reach.
If you would like to learn more about how to get a trademark registration in Canada or the United States, contact us now for a complimentary and confidential initial telephone appointment.
