TRADE-MARKS

A trade-mark is a word, logo, symbol, design, or a combination thereof which is displayed on the product/product packaging or displayed in the advertising of services. The purpose of a trade-mark is to indicate to the public that the branded products or services originate from one particular owner, and it distinguishes the owner’s goods or services from those of its competitors.

Trade-mark registration gives the owner rights to the exclusive use of its trade-mark throughout all of Canada.

A trade-mark registration gives an owner significant advantages including the following:

• Registration is direct evidence of ownership, and can be essential in protecting an internet domain name (URL)
• In a dispute, the registered owner does not have to prove ownership; the onus is on the challenger. Use of an unregistered trade-mark can lead to a lengthy, expensive legal dispute over who has the right to use it
• A registered trade-mark is a valuable asset for business expansion through licensing or franchising opportunities
• A registered trade-mark can be enforced throughout Canada, regardless of where the owner is located. An unregistered trade-mark has geographical boundaries and can be only enforced only in those areas where it has been used extensively enough to have become recognized
• The Canadian Intellectual Property Office can and does refuse applications to register trade-marks which it believes are likely to be confused with existing registered trade-marks
• The owner of a registered trade-mark may initiate legal action for infringement proceedings before the Federal Court of Canada. The owner of an unregistered trade-mark may not initiate trade-mark infringement proceedings, but must rely on common law "passing off" proceedings, which places an onerous burden on the right owner of proving its first use
• After a trade-mark has been registered for five years it cannot be challenged on the basis that another party used it first (unless the owner of the registered trade-mark knew of the other party's use before adopting the trade-mark)
• A Canadian trade-mark registration can be used to claim priority in registering the trade-mark in foreign countries. In some foreign countries, a trade-mark registration may not be possible if the trade-mark is not registered in the owner’s home country
• Use is not required to start protecting the trade-mark. An owner has two options: It is entitled to registration based on its bona fide intention to use the mark in Canada or from the time it actually started to use the mark in Canada. Also, a trade-mark registration can be obtained by a foreign entity if it has secured a home country registration for the same mark and same products/services.

O’BRIEN TM SERVICES aims to ensure that its clients’ corporate and product identities will be represented securely.