Terrance S. Carter, B.A., LL.B., Trade-mark Agent
September 1999
1. Trade-marks Are An Essential Part Of Every Business
2. Trade-marks Represent The Good Will Of A Business As Its Focus Point
3. Trade-marks Distinguish One Business From Another Business
4. Trade-marks Have Present And Future Marketing Value
5. Trade-marks Have Value For Future Licensing And/Or Franchising
6. Trade-marks Can Be Lost Or Seriously Eroded If They Are Not Properly Protected
7. Need To Be Pro-Active In Protecting Trade-mark Rights Or Risk Losing Them By Default
1. The Basic Nature Of A Trade-mark
a trade-mark is any mark used to distinguish wares or services manufactured, sold, leased, hired or
performed from those of others
2. What Can A Trade-mark Consist Of?
a single word, i.e.,
"Lego"
a combination of words, i.e.,
"Miss Clairol"
a logo or symbol, i.e.,
The big "M" for McDonalds
a slogan, i.e.,
"You deserve a break today"
a package or container designs, i.e.,
"The Coca-Cola Bottle"
a logo, i.e.,
even a telephone number, i.e.,
"967-1111"
1. Trade Name Is The Name Under Which A Business Is Carried On
2. Trade Name Is The Corporate Or Business Name As Opposed To The Trade-mark
3. An Example Of A Trade Name Is "The Coca-Cola Company", Whereas "Coke" Is A Trade-mark
4. The Trade-marks Act Does Not Provide For Registration Of A Trade Name Unless It Is A Trade-mark
5. Trade Names Are Registered:
as corporate names, or
as business names
6. Registration Of A Trade Name As Either A Corporate Name Or A Business Name Is For Public Information
Purposes Only
7. Registration Of A Corporate Name Or Business Name Does Not Give Trade-mark Protection
1. A Trade-mark Can Be Confusing With Pre-existing Trade-marks Or Trade Names
2. Failure To Restrain Unauthorized Use Of Trade-marks By Other Businesses By Not Objecting To
similar corporate names
similar business names
similar logos
3. Failure To Properly Control Licensing Of A Trade-mark
4. Abandonment Of A Trade-mark Through Lack Of Use
5. Limitation On Common Law Trade-mark Rights By Not Objecting To Trade-mark Registration By Others
6. Dilution Of Trade-mark Through Inconsistent Use Or Different Application
1. Common Law Provides Protection To Restrain A Competitor From "Passing Off" It's Goods Or Services
Under The Trade-mark Of Another
2. Common Law Protection Of A Trade-mark Does Not Require That The Trade-mark Be Registered
3. However, Trade-mark Rights At Common Law Must Be Established Before A Court
4. Trade-mark Rights At Common Law Are Limited To A Local Geographic Area
1. Trade-mark Registration Provides A Presumption Of Ownership Of A Valid Trade-mark
2. Trade-mark Registration Is Effective Throughout Canada
3. Trade-mark Registration Permits Enforcement Across Canada
4. Trade-mark Registration Provides The Owner With The Exclusive Right In Canada To Use The Trade-mark
5. Trade-mark Registration Gives Public Notice Of The Trade-mark
6. A Trade-mark Registration Can Become Incontestable In Some Situations After Five Years
7. Failure To Obtain Trade-mark Registration May Result In A Limitation Of Common Law Trade-mark Rights
8. Trade-mark Registration Can Assist In Protecting A Domain Name On The Internet
9. Trade-mark Registration Facilitates Obtaining Trade-mark Registration In Other Countries And Allows
Priority Filing In Some Situations
1. Inherently Strong Marks
the strongest trade-marks are those that have no inherent meaning
i.e., coined words like "Xerox" or "Exxon"
2. Inherently Weak Marks
dictionary words that describe a characteristic or quality of goods
i.e., "super glue" for glue products
3. Suggestive Marks
not "clearly descriptive" but because the marks is suggestive of products are not considered to be inherently strong marks
i.e., "Shake and Bake" for chicken coating
4. Compound Word Marks
the combination of a distinctive word with a descriptive word
i.e., "Coca-Cola", with "Coca" being distinctive and "Cola" being descriptive
5. Marks That Have Acquired A Secondary Meaning
a weak trade-mark can through length of usage become a distinctive trade-mark
i.e., "Fridedaire" for fridges
1. The Internet Is Becoming An Integral Part Of Business Operations
by year 2001 most global commerce will be on the Internet
Internet is moving from an informational source to a transactional form
2. What Is A Domain Name
domain name is the numeric name of a computer on the Internet
usually includes the operating name of organization, i.e., "microsoft.com"
first level of the domain name are the international designation of .com, .org, .net, .edu, .gov
the second level of the domain name, i.e., "pepsi.com", "mcdonald.com", are the operative part of the domain name
there are also regional first level names such as .ca for Canada or .us for the United States
3. The Importance Of Obtaining A Domain Name
there are limited number of domain names available because no two domain names can be the same
there may be increased number of first level categories in the future but unlikely to be enough to avoid emerging competition for names
important to obtain domain name sooner as opposed to later
domain name will become prime source of goodwill in the future i.e., "microsoft.com"
4. Conflict Between Domain Names And Trade-marks
trade-marks are national, domain names are international
trade-marks relate to specific products or services, domain names have no restrictions to goods or services
trade-marks are based on first to use, domain names are based on first to file
trade-marks are based upon multiple people using the same mark, domain names have only one owner
on a worldwide basis
5. Avoiding Problems In Obtaining A Domain Name
a confusing domain name may constitute a trade-mark infringement
need to conduct a corporate name search in Canada
need to conduct trade-mark search in Canada and possibly in the United States.
6. Preserving Domain Name
obtain trade-mark registration for domain name to comply with Internic Domain Name Dispute Policy
in the short term, there may be need to obtain expeditious foreign trade-marks registration
watch for potentially confusing domain name by others
7. Challenging Existing Domain Names
it is possible to challenge an existing domain name
obtain a trade-mark with date of first usage prior to domain name to "bump" existing domain name
rely upon Internic Domain Name Dispute Policy to force other domain name to change
Proper Marking
prior to trade-mark registration use ""
after the trade-mark registration use "®"
Trade-marks Should Be Distinctive
distinctive type
bold type
capitalization
prominent position on letterhead
Trade-marks Should Be Used As An Adjective Not A Noun
i.e., "Band-aid bandages"
trade-marks used as a noun will become unforceable
* i.e., "linoleum", "zipper", "escalator", and "cellophane"
Need To Provide Education On Use Of Trade-marks For:
the owners of a business
the executive staff of a business
the staff involved in media and publications
1. Ensure Business Registration Of A Trade-mark
incorporation with the name of a business that includes the trade-mark
a trade-mark which is a trade name (i.e., business name) needs to be registered under The Business
Name Act of Ontario
2. Monitoring Infringement By Other Competing Trade-marks
regular review of competing trade-marks in the Trade-marks Journal
regular review of Trade Journals, magazines, and newspapers
review of corporate and business name registrations
review of names in telephone books in major cities
regular review of Internet domain names
3. Be Pro-active In Stopping Infringement Of A Trade-mark
give "polite but firm" first notice of infringement to offending party
as an alternative, suggest establishing a licence agreement
propose non-binding mediation ("ADR")
if all else fails, then proceed with litigation to protect the trade-mark
4. Protecting An Unregistered Trade-mark
protection under corporate law
confusing corporate names can be forced to change
* under the Canada Corporations Act
* under provincial corporation legislation
* under provincial business name legislation
requires a complaint to the applicable government department
expunging a competing registered trade-mark
* Section 45 Notice requires evidence of use within last three years
* expungement of a trade-mark within five years if prior use by an unregistered trade-mark
* expungement proceedings can be brought at any time where
the offending mark was not registerable at it's registration; or
the trade-mark was not distinctive as of the date of institution of the legal proceedings
"passing off" action at common law
5. Protection Under The Trade-marks Act For Registered Trade-marks
6. Ensure Usage Of The Trade-mark
if a registered trade-mark is not used for three years then it maybe subject to expungement under a
Section 45 Notice
Trade-marks Are An Essential Asset Of A Business
Trade-marks Can Be Lost If They Are Not Properly Protected
Need To Be Pro-active In Protecting Trade-marks Or Risk Losing Trade-mark Rights By Default
Registration Of A Corporate Name Or A Business Name (Trade Names) Does Not By Itself Give Trade-mark Protection
Trade-mark Rights Exist At Common Law But Those Rights Should Be Supplementary By Trade-mark
Registration
Separate Trade-mark Registration Should Be Done In Each Country In Which The Business Is Operating
Essential To Properly Use And License Trade-marks
An Infringement Of A Trade-mark By Others, Even If Done Unintentionally, Must Be Immediately Curtailed
Board Members And Executive Staff Of A Business Need To Be Informed Of The Importance Of Trade-mark Rights
A Business Should Obtain A Domain Name Using Its Trade-mark And Obtain A Trade-mark Registration
DISCLAIMER: This summary of Avoiding Wasting Assets - Trade-Mark Protection for Business is distributed with the understanding that
it does not constitute legal advice or establishing the solicitor/client relationship by way of any information contained herein. The contents are intended
for general information purposes only and under no circumstances can be relied upon for legal decision making without first consulting with a lawyer
and obtaining a written opinion concerning the specifics of your particular situation.
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