A trademark may be registered in Canada for almost any means used by a business to distinguish its goods or services from those of its competitors in the marketplace. A Canadian trademark registration may be composed of one or more words, a graphic design, a unique form of packaging, colours, sounds, scents, and flavors or any combination thereof.

Registration in Canada grants the owner the exclusive right to use the trademark across Canada in association with the goods and services listed in the registration. A common law or unregistered trademark is entitled to protection only in the geographic region where it has an established reputation.

In addition to giving notice to the public of your exclusive right to the trademark, a registration sets up a legal presumption that the registrant is the lawful owner of the trademark. This is especially helpful in protecting that right when a dispute subsequently arises.

An “international trademark registration” is recorded on the “international register” maintained by WIPO, but recording an “international trademark registration” on the international register does not automatically grant the registrant exclusive worldwide rights in the mark.

The international register may be better described as an international database of trademarks registered in multiple jurisdictions. Each trademark on the international register is referred to as an “international trademark registration”, but it is in fact a collection of protocol applications/registrations for the same mark in multiple countries. The international register serves a central register for coordinating the filing and management of trademark registrations for the same mark in multiple countries.

The system for recording trademarks on the international register is governed by an international treaty known as the Madrid Protocol.

The marks, arms, crests and flags adopted by the following entities may be eligible for protection as so-called “official marks” in Canada:

• any level of government in Canada;
• an agency of any level of government in Canada;
• the Canadian military;
• foreign and domestic universities;
• foreign governments; and
• “public authorities”.

A “public authority” is limited to:

1. an entity that is subject to a significant degree of control by a Canadian government; and
2. whose activities benefit the public.

In this context, a government must, either directly or through its nominees, exercise a degree of ongoing influence over the entity’s governance and decision-making. Non-profit or charitable status does not, on its own, make an entity eligible to record official marks.

Unlike traditional trademarks, official marks enjoy a monopoly for all wares and services in the Canadian marketplace. The applications are not subject to potential opposition by third parties and, once recorded, official marks never require renewal.

A certification mark is used to identify goods or services that meet a defined standard.

This standard may refer to:

1. the character or quality of the associated goods or service;
2. the working conditions under which the goods have been produced or the services performed;
3. the class of persons involved in producing the goods or performing the services; or
4. the geographic area within which the goods have been produced or the services performe

The entity to which a certification mark is registered may not be engaged in the business of producing or performing the associated goods or services. For this reason, certification marks are typically registered to trade associations who are then responsible for monitoring their use to ensure compliance with the defined standard.

The most familiar example of a certification mark protected in Canada is likely:

This certification mark is registered by the Canadian Standards Association and is licensed to, among others, the manufacturers of small appliance and household products which meet their defined standards.

Geographical Indications (GIs) identify agricultural products as originating from a region where a characteristic of the product is essentially attributable to its geographical origin. Canada has historically only recognized GIs in relation to wines and spirits. However, it has recently been expanded to include other food and agricultural products, including cheeses, oils, spices, cured meats, vinegars, fruits, etc.

Well-known examples of GIs in Canada include Cognac, Champagne and Beaujolais from France, Scotch Whisky from the UK, and Canadian Rye Whisky.

GIs are typically registered to a trade association which is then responsible for monitoring their use to ensure compliance with the defined geographic source.

A distinguishing guise, also known as a “trade dress” or “get up”, is:

1. a shaping of wares or their containers; or
2. a mode of wrapping or packaging wares,

the appearance of which is used as a trademark to distinguish the goods and services of one business from those others in the marketplace.

For registration, such marks must be distinctive in Canada and this may require the support of affidavit evidence to demonstrate extensive and exclusive use of the mark in Canada prior to the filing date.

Some famous marks registered as a distinguishing guise in Canada include:

• the shape of the Coca Cola beverage bottle;
• the foil wrapper and paper tag used to package Hershey Kisses.

Some three-dimensional marks are considered inherently distinctive and do not require the support of affidavit evidence to prove distinctiveness prior to filing a trademark application. A three-dimensional mark that is arbitrary and not inherently related to the associated goods or their packaging will not require evidence to prove that they are distinctive prior to filing.

Good examples of three-dimensional marks that would not be considered inherently distinctive without evidence include:

• the appearance of hood ornaments since these do not normally constitute a shaping of the automobile itself and are not typically items of trade on their own; and

the appearance of mascots, like Ronald McDonald & Colonel Sanders, to promote restaurant services since such figures have no inherent relationship with food products or services.

In Canada, a trademark agent is a professional licensed to represent applicants in the process of applying for and obtaining trademark registrations with the Canadian Intellectual Property Office (CIPO). Trademark agents are knowledgeable about trademark law and practice, including the filing and prosecution of trademark applications, managing trademark portfolios, and providing strategic advice on trademark protection.

A trademark agent must be registered with the College of Patent Agents and Trademark Agents (CPATA). While many trademark agents are also lawyers, it is not a requirement and unlike the United States, lawyers cannot practice before CIPO without also being licensed as a trademark agent. To become a registered trademark agent in Canada, individuals must apprentice for two years, pass the trademark agent examination administered by CPATA and satisfy Canadian residency requirements.

Although the terminology is often confused and confusing, there are important legal differences between corporate names, tradenames, domain names and trademarks:

• a corporate name is the name assigned to a corporation when it is incorporated;
• a tradename is the business name under which the corporation (or other type of business enterprise) carries on business;
• a domain name is an Internet address that is used as a means of locating your business or information about your business via the Internet; and
• a trademark is a mark used for the purpose of distinguishing goods and services sold by one business from those sold by another business.

For example, many corporations incorporate as a numbered company, but never carry-on business under this name, such as 123456 Ontario Inc. The same company may register a business name, such as “Happy Clothing Company” and a domain name such as “www.happyclothingcompany.ca”.

The same company may also decide to use a family of marks to distinguish its goods and/or services from its competitors, such as HAPPY SOX, HAPPY PANTS and HAPPY SHOES.

In this example,

• the corporate name is 123456 Ontario Inc.;
• the tradename is “Happy Clothing Company”;
• the domain name is www.happyclothingcompany.ca; and
• the trademarks are HAPPY SOX, HAPPY PANTS and HAPPY SHOES.

However, each of these names may also serve as a trademark depending on how it is used.

• Is the tradename incorporated into a logo or graphic design? If so, the tradename is probably also a trademark.
• Does the business use the domain name prominently in its signage? If so, the domain name is probably also a trademark.

Does the corporate name or domain name only appear together with the corporate address and contact information on business cards and flyers? If so, they are only corporate names or domain names, and not trademarks.

Yes, you can register a business name or domain name if you are using it as a trademark.

In legal terms, a trademark is a mark "used" for the purpose of distinguishing goods and services sold by one business from those sold by others. Unless a business or domain name is "used" in the manner of a trademark, it is not a trademark. It is the equivalent of a personal name, address or telephone number as it is simply a means of identifying or locating information about your business via the Internet.

For instance, simply displaying a business name or domain name on business cards, letterhead, packaging and advertising together with other contact information for your business (like a street address or telephone number) will not likely be considered “use” of the business name or the domain name in the manner of a trademark.

To achieve trademark status, a business name or domain name (with or without the .ca, .com, .biz or other extension) should appear prominently in advertising, signage and/or packaging as a means of distinguishing the associated business or its goods/services from those of its competitors.

Until a business name or domain name is used in the manner of a trademark, the business will not enjoy any exclusive rights in it as trademark for the relevant market and any trademark registration for the business name or domain name will be considered invalid.

Maybe. Trademarks are categorized as either standard character marks or design marks.

The primary trademark for many businesses is a word or combination of words. They may be: (a) a known word or a component of a known word; (c) an invented word or “coined” term; or (c) a combination of the above. When represented in the standard characters of the Roman alphabet, these are all known as standard character or “word marks”. When word(s) are registered as standard characters, the trademark registration grants exclusive right to the word(s) in any font, colour or graphic representation.

Most businesses will also adopt a logo with graphic elements such as fanciful fonts, colours, lines and stylized images. These are known as “design marks”. If the design mark combines graphic elements with a word or combination of words, it may also be referred to as a “composite mark”.

Standard character marks are generally not entitled to copyright protection because they are usually too short and do have enough content to qualify as an original work under copyright law. However, the threshold for copyright in the graphic elements is lower. As a result, design marks are more likely to qualify for copyright as well as trademark protection.

No, you cannot patent a trademark.

A trademark may be composed of one or more words, a graphic design, a unique form of packaging, colours, sounds, scents, flavors, textures, 3-D shapes, moving images, holograms and unique forms of packaging or any combination thereof.

A patent is a statutory monopoly in an invention which is granted by the federal government to a patentee in exchange for disclosing the invention to the public. A patent may be granted for inventions which involve applied science or engineering, namely “any new and useful art, process, machine, manufacture or composition of matter” or improvements to same.

Not all trademarks are created equal. Before adopting a new trademark, you should first ensure that the trademark is available by conducting appropriate searches. If available, it is also important to consider the relative “strength” of the proposed trademark for legal purposes.

Invented Terms:

At one end of the spectrum, invented terms like KODAK, XEROX and EXXON are considered strong trademarks from a legal perspective since they have no other meaning. However, they may initially require extensive marketing to become distinctive in the marketplace.

Descriptive and Generic Terms:

At the other end of the spectrum, descriptive or laudatory marks like INTERNATIONAL BUSINESS MACHINES, UNITED PARCEL SERVICE and SUPERSTORE are considered weak trademarks from a legal perspective since they are largely composed of words common to the market for the related goods and services. Words that are common and descriptive in an industry cannot be monopolized by one business. Similarly, laudatory terms like “super”, “great”, “classic” or “standard” cannot be monopolized by one business.

Suggestive Terms:

In the middle of the spectrum are known words, syllables and phrases that have a suggestive quality. For instance, NIKE, APPLE and PRESIDENT’S CHOICE, are considered suggestive marks in that they suggest a positive association with the products and services. NIKE (a Greek goddess for victory) suggests that the associated sports products will lead the consumer to victory. PRESIDENT’S CHOICE suggests that the associated food products are favoured by an authority figure. Given its association with teachers and great thinkers like Isaac Newton, APPLE suggests that use of the associated computer products will be educational and lead to “bright ideas”. (Note however that APPLE simply could not be adopted as a trademark for apples since it its descriptive).

Names & Surnames:

Like descriptive terms, names and surnames are considered weak trademarks from a legal perspective since a person’s name and common surnames are considered descriptive and cannot be registered as trademarks in Canada until they have been extensively used as a trademark and become associated with a specific business.

The law also prohibits the registration of the name of any person living or dead less than 30 years as a trademark without their permission or the permission of their estate.

Finally, the names of well- known public figures are protected by “publicity rights”. These rights prohibit the use of the image of a public figure or their name to promote a product or service without their permission.

Geographic Place Names:

When a place name is associated with the location of the business, it will be considered a descriptive term and will not registrable as a trademark until it has been extensively used in the market and become exclusive associated with a specific business.

When a place name is not associated with the location of the business, it may be considered deceptive and may not be registrable as a trademark on the grounds that it is misdescriptive.

There are additional risks when a place name is used as a trademark for wine, spirits or food products. Certain place names known as geographical indications may only be used in Canada as a trademark for products that originate from an identified location such as CHAMPAGNE for sparkling wine, NIAGARA for wine, FETA for cheese and PROSCIUTTO DI PARMA for dry-cured meats.

Selecting business names and trademarks are important business decisions that deserve care and attention. Too often, a successful business learns after the fact that it has selected a business name or trademark in which it will be difficult or impossible to assert strong monopoly.

If you adopt a trademark that is confusing with a trademark previously used by another business in the same country or geographic region, you may receive a cease and desist letter and, if litigation is commenced, you may be required to both rebrand and pay compensation to the prior user of the trademark for infringement. We therefore recommend that searches be conducted prior to adoption of a new trademark.

A preliminary or “knock-out” search will identify any obvious obstacles to the registration of a proposed trademark. A more formal search may disclose other marks not identified in a preliminary search such as marks with a similar meaning or sound, but different spelling. Such a formal search is not required, but may be recommended depending on the trademark and other factors.

Searches may disclose that a trademark is NOT available. However, no amount of searching can ever conclusively determine that a mark IS available because many small/local businesses do not register their trademarks or incorporate. As a result, the scope of searches conducted prior to filing is a business decision that depends on your risk tolerance, whether your business model is uniquely dependent on the trademark and whether you plan to invest significant money in promoting the mark in the near future.

If you have already been using the mark for some time without any objections by third parties, the risk may be low and you may already have goodwill in the mark that merits trying to protect by filing a trademark application without the benefit of a formal search.

It is not mandatory to register a trademark in Canada as certain rights to a trademark are accrued through its use in the market. However, it can be advantageous to register trademarks for a variety of reasons, including:

• a registered trademark can be a valuable asset for a business.
• a registered trademark grants a business the exclusive right to use it across Canada in connection with the goods and services identified in the registration.
• a registered trademark is an absolute defense to allegations of trademark infringement by third parties.
• a registered trademark provides public notice of the exclusive rights in a trademark.
• a registered trademark can serve as a foundation for seeking a corresponding trademark registration in other countries.
• a registered trademark can be filed with the Canada Border Services Agency (CBSA) to prevent the importation and exportation of counterfeit goods.
• a registered trademark can be used to support a take down request to remove instances of unauthorised use of a trademark on Internet platforms.
• a registered trademark can be enrolled in the Amazon Brand Registry and the eBay Verified Rights Owner Program to protect your brand in those marketplaces.
• a registered trademark may be displayed with the ® symbol to deter others from adopting the same or a similar mark.

Trademark rights are recognized nationally, meaning they are protected in the countries  where they are actively used. Trademark registrations are therefore generally issued by national governments.

Ideally, a business should register its trademarks in each country where they are selling their products or services to customers. If you are a Canadian business selling to customers located in both Canada and the United States, you are doing business in both Canada and the United States and you should consider registering your trademarks in both the United States and Canada.

If you have customers or plan to seek customers in multiple foreign countries, you can register your trademark through an international system administered by the World Intellectual Property Office (WIPO). This system permits Canadian businesses to file trademark applications through the Canadian Intellectual Property Office (CIPO) for registration in multiple countries.

To file an application in Canada, we require the following information:

1. Proper legal name of applicant and address.
2. Proper legal name(s) of all predecessors in title that used mark in Canada before applicant, if any. This would include any sole proprietor that used the trademark before the business was incorporated.
3. Precise identification of mark to be filed.
4. If a design mark, a 7 cm x 7 cm black and white representation of the mark on white paper is required, or a black and white electronic version of the design in either .tif or .jpeg format.
5. If colour is to be claimed as a feature of the mark, a colour copy may be submitted.
6. Description of goods and services to be associated with the mark. Description to be provided in ‘ordinary commercial terms.
7. If application claims prior from a corresponding foreign application or registration, particulars with respect to the foreign application, namely the foreign application number, the date of filing/registration and the country where filed/registered.

Canada does NOT require the applicant to sign a power of attorney appointing their trademark agent or provide any specimens to prove use of the applied-for-mark.

No, all the information submitted with a trademark application is considered public information and may be published on the trademark register for each country where an application was filed. This information is then generally available via the Internet. The only exception is the applicant’s email address which may not be published via the Internet if the applicant as appointed a trademark agent or attorney.

It is not mandatory to register a trademark in Canada. In law, trademark rights arise as of the date of the first use. However, filing a trademark application is considered a good business practice. A trademark registration provides national protection for a valuable asset of your business and is an absolute defence to infringement claims by third parties.

A trademark application may be filed before or after the mark is adopted. However, we recommend that searches to clear a proposed trademark prior to adoption.

When launching a new business, it would be advised to place the highest priority on filing trademark applications to register any distinctive word(s) that appear in their corporate or business name. The second priority should be on filing trademark applications to register any other word(s) to be used in their business as a slogan or to identify specific products or services. In most cases, the least priority should be placed on filing trademark applications to register logos unless the graphic features are highly unusual or the word(s) are relatively weak trademarks.

After a logo has been used in a consistent format for several years, a business may consider whether to file a trademark application to provide it with increased protection. If a logo is unique and has acquired a reputation in the marketplace, an application to register it may now be warranted. If a logo is likely to be updated in the near future, filing a trademark application is likely an unwarranted expense.

Its depends. It is important to understand the value of a trademark registration from a business perspective as well as its relative strengths and weaknesses from a legal perspective.

The primary trademark for many businesses is a word or combination of words. The words may include known words or components of known words, an invented or “coined” term or a combination thereof. When represented in the standard characters of the Roman alphabet, these are known as “word marks” or standard character marks.

A trademark that includes graphic elements such as fanciful fonts, colours, lines and stylized images are known as logos or “design marks”. If the design mark combines graphic elements with a word or combination of words, it may also be referred to as a “composite mark”.

Registration of a word mark provides a monopoly for that in any font, colour or graphic representation. It therefore provides broader and more flexible protection.

Registration of a design mark provides protection only for the specific stylization, design, and color scheme (if colour is claimed as a feature). After its registration, it may be prudent to file a new trademark application if a business makes significant changes to the features of the design.

Word marks, especially those matching the business name, are generally the first priority given their importance to the business and the broad flexible protection granted to word marks. The second priority should be on filing trademark applications to register any other word marks to be used in their business as a slogan or to identify specific products or services. In most cases, the least priority should be placed on filing trademark applications to register design marks and composite marks unless the design features are highly unusual or the word marks are relatively weak. 

After a design mark has been used in a consistent format for two to three years, a business may consider filing a trademark application to provide it with increased protection. If a design mark is unique and has acquired a reputation in the marketplace, an application to register it may now be warranted. If a design mark is likely to be updated in the near future, filing a trademark application is likely an unwarranted expense.

Exclusive rights in design marks can also be enforced under copyright law. International copyright protection arises automatically by operation of law upon the creation of an original work and prohibits the unauthorized reproduction of a substantial copy for any purpose. Design marks are also often eligible copyright protection as artistic work. In this regard, you should ensure that you obtain a written transfer of title to copyright in any design mark from any independent contractors involved in their creation.

It depends. Where your customers recognize a unique colour scheme as associated with your business, the registration of a logo or design mark with a colour claim may be the best strategy.

However, a black and white logo or design mark offers broader protection of the trademark in any colour. This provides greater flexibility by allowing colour variations and future color changes without losing legal protection. Claiming colour as a feature of a trademark limits protection strictly to the logo or design mark as represented in those colours.

Applicants should include all of the goods and services currently associated with the applied-for-mark as well as any goods or services that they contemplate associating with the applied-for-mark in the near future.

In Canada, goods and services associated with your trademark must be designated into one of the 45 possible classes through the Nice Classification and then described in “ordinary commercial terms” in sufficient detail to determine whether the applied-for-mark is confusing with a prior registration or descriptive of the associated goods and services. For example, "cases" alone are not acceptable as they could include any type of "cases" from camera cases to pillowcases.

To assist you in providing the identification of goods and services, you may consult the Trademarks Goods and Services Manual at https://ised-isde.canada.ca/site/canadian-intellectual-propertyoffice/en/trademarks/goods-and-services-manual. It is recommended that pre-approved identifications be adopted where available and accurate; however, if an accurate identification does not appear in the Manual, you may propose a custom identification using the Manual for guidance.

For novel or unique categories of goods and services, it can be helpful to provide specimens of promotional material along with the application as evidence to demonstrate that the proposed identification does, in fact, describe the goods and services in “ordinary commercial terms”.

The Nice Agreement is an international treaty used to provide a standardized classification system for the goods and services identified in trademark applications.

The Nice Classification establishes 34 classes of goods and 11 classes of services. Generally speaking, goods are classified according to their purpose or function, and by the material from which the good is made. For example, class 1 contains chemicals used in industry, science and photography, class 2 covers paints, varnishes and preservatives, and class 3 contains bleaching cleaning and polishing preparations. Distinction is also drawn between finished products and raw materials or partially processed goods.

Consider a jewellery store. The retail sale of jewellery is a service within class 35. Jewelry appraisal is a financial service in class 36. Jewellery repair is a service in class 37 while the casting or manufacture of jewellery for others is a service in class 40. As goods, articles of jewellery fall under class 14 as goods made of precious metals.

After filing a trademark application in Canada, your right to amend the application is limited. You can always update the name and address of the applicant. You can remove goods and services identified in the original application. You can make very minor amendments to the applied-for-mark. However, you cannot broaden the scope of goods and services identified in the application after it has been filed.

After a trademark has been registered in Canada, you may file an application to extend the goods and services associated with the registered mark. An application to extend a registration will go through the same process as any other trademark application. When the application to extend matures to registration the new goods and services will be added to the existing registration and the registrant will only have one trademark registration to renew.

After filing in Canada, you can expect to wait around 12-24 months for your trademark application to mature to registration if there are no substantive objections and no opposition by a third party.

Canada has an option for expedited examination available in certain circumstances, such as: 1) a court action is expected or underway; 2) combating counterfeit products at the Canadian border; 3) protection for intellectual property rights on online platforms; and 4) to preserve its claim to priority within a defined deadline. If your expedited examination is accepted, you may receive a registration in 4-8 months barring no objections from examiners.

After filing in the United States, you can expect to wait around 12-18 months for the trademark to mature to registration if there are no substantive objections and no opposition by a third party.

After filing a Canadian trademark application, you can rely on it as the basis for filing foreign trademark applications in up to 193 countries through the World Intellectual Property Office (WIPO). Foreign applications filed through WIPO will take no longer than 18 months to be examined.

A trademark opposition is adversarial proceeding commenced by a third party who objects to the registration in Canada of a trademark which is the subject of a still pending application.

In most cases, a trademark registration grants the registrant the exclusive right to use the trademark across Canada. A valid trademark registration is also considered an absolute defense to any claims of infringement that may be brought by another party respecting a similar mark.

The purpose of an opposition proceeding is to determine whether the mark should be registered as the exclusive trademark of the applicant in Canada.

However, the refusal of trademark application does not necessarily mean that the applicant cannot use the trademark in Canada. Only the courts can issue orders against parties prohibiting the use of a trademark.

Most opposition proceedings are resolved through settlement or other means while in progress, but a complete opposition may last more than two years.

No. Unlike copyright and patents, trademark rights do not automatically expire after a set time period. Trademark rights may be protected as long as the trademark remains in use. However, trademark registrations need to be renewed every ten years in Canada. The term varies in other countries.

In Canada, certain types of marks are not eligible for trademark registration due to specific prohibitions set out in the Trademarks Act. These restrictions ensure that trademarks do not unfairly restrict competition or mislead consumers. Following is the list of marks that are not registrable as trademarks in Canada:

1. Names and Surnames: Personal names or surnames without additional subject matter are not registrable unless they have acquired distinctiveness through extensive use as trademarks.
2. Descriptive or Misdescriptive Marks: Marks that are either clearly descriptive of the character or quality of the goods or services (e.g., "Golden" for honey) or deceptively misdescriptive (e.g., suggesting a product is made in Canada when it is not) in English or French are not registrable. Terms of art and symbols that through common commercial use by multiple businesses that describe the quality, quantity, purpose or value of goods or services are also not registrable.
3. Words in Other Languages: Words that are the generic name in any language of the associated goods or services are not registrable.
4. Place Names: Geographical descriptive terms without additional subject matter that describe the origin of the goods or services are not registrable.
5. Official Marks: Prohibited marks include flags, symbol or emblems of government entities, other countries, as well as international organizations are not registrable, unless authorized by the competent authority.
6. Confusing Marks: Marks that are confusingly similar to a registered trademark or a prior pending trademark application are not registrable.
7. Functional Designs: Features of a product or its packaging that are purely functional, such as a product shape necessary for its function, cannot be registered as a trademark because they do not serve as identifiers of commercial origin and represent an unwarranted restriction on trade.
8. Scandalous, Obscene, or Immoral Words or Designs: Marks that are considered offensive or contrary to public morality or order are not registrable.

Proper use of a trademark is essential to ensure that the mark continues to have value in the marketplace and to qualify for legal protection.

If a trademark is improperly used, it may be vulnerable to becoming a generic term like ESCALATOR which was originally a trademark for a “moving staircase”. If consumers cannot rely on a mark to distinguish the goods and services of one competitor from another, the mark will not have value as a trademark and will not qualify for legal protection. To ensure that marks avoid the fate of ESCALATOR, proper and consistent use of trademarks are essential.

A trademark is NOT the name of the related product or service. It is a brand name.

Here are a few hints:

• do not use trademarks as nouns;
• do not use trademarks as verbs;
• do not use trademarks in a plural form;
• do use trademarks only in proper possessive form;
• do use trademarks in combination with a generic name for the related product or service.
   

In Canada, a word, phrase, or symbol used by a business to identify its products or services in the market may be marked with a trademark notice:

• ® is the proper notice or marking for registered trademarks.
• TM is the proper notice or marking for unregistered trademarks.
• MC is the acronym for “marque de commerce” and is sometimes used to mark unregistered trademarks in Quebec and other jurisdictions where French is the dominant language.
• SM is sometimes used to mark unregistered trademarks used for services, especially in the US.

When a trademark is being used by a licensee or franchisee, this should be included in the notice:

• TM is a trademark of XYZ Company used under license by ABC Company

The ™ or ® symbol do not need to be repeated every time the mark appears on the same item. They need only appear in the first or most prominent mention of the mark.

In reports and documents, the first appearance of the trademark should be accompanied by the ™ or ® symbols and a generic description of the related product or service. For example, “KLEENEX® tissues”.

Just like any other property, trademarks can be licensed, bought, sold, inherited, or otherwise transferred through legal transactions and such transaction may have tax consequences. For trademarks with a long history of use, businesses are well-advised to consult with their accountant before transferring title to such trademarks.

In Canada, a trademark may be assigned either in connection with or separately from he goodwill of the business. The same is not true in the United States where the trademark must be transferred together with the goodwill.

Since trademarks serve as indicators of a single source of goods or services, families of similar marks should be sold as a group and, when licensing, the owner should maintain control over the quality or character of the goods and services associated with its trademark by the licensees. A written license agreement is strongly recommended.

If confusingly similar trademarks are used by various parties in a common marketplace without proper controls, the trademark owners may lose their right to the exclusive use of those trademarks.

In Canada, section 6(2) of the Trademarks Act stipulates that trademarks are considered confusing “if the use of both trademarks in the same area would be likely to lead to the inference that the goods or services associated with those trademarks are manufactured, sold, leased, hired or performed by the same person, whether or not the goods or services are of the same general class”. In this assessment, several factors are considered.

The Distinctiveness of the Trademarks:
How unique or inherently distinctive the trademarks are, and the extent to which they have become known. At one end of the spectrum, invented terms like KODAK, XEROX and EXXON are considered inherently distinctive since they have no meaning except as trademarks. They are considered highly distinctive from a legal perspective.

At the other end of the spectrum, largely descriptive or laudatory marks like INTERNATIONAL BUSINESS MACHINES, UNITED PARCEL SERVICE and SUPERSTORE are not considered inherently distinctive since they are composed of known words which are used as common terms in the relevant market. They are considering to be not highly distinctive from a legal perspective.

In the middle of the spectrum are known words, syllables and phrases that have a suggestive quality such as NIKE, APPLE and PRESIDENT’S CHOICE since they suggest a positive association with the relevant products and services without being common descriptive terms.

The Length of Time the Trademarks Have Been in Use:
How long the trademarks have been in use and the extent of their recognition in the market. Generally, it is presumed that a trademark which has been used in the marketplace for a long period of time has a stronger reputation than a proposed trademark or one that has only recently been adopted. On the other hand when two trademarks have co-existed in the relevant market for a long period of time without any reported instances of confusion among consumers, this may be considered evidence that they are sufficiently different to avoid confusion.

The Nature of the Goods, Services, or Business:
The similarity between the goods or services associated with the trademarks, including their channels of trade. Similar, even identical, trademarks may be adopted by multiple businesses provided that they are used to promote different goods and services that are not sold in the same or overlapping lines of trade. However, the adoption of a trademark is prohibited where it would create a “link, connection or mental association” in the consumer’s mind with the trademark for an established business. This may be true even when the newcomer is not a direct competitor of the established company.

For instance, the word APPLE was used simultaneously in Canada as a trademark for computers, a music label and automobile glass for many years without confusion. However, the adoption of JAGUAR as a trademark for luggage was prohibited because JAGUAR was already the trademark for an automobile manufacturer and there is a connection in the mind of consumers between automobiles and travel accessories.

The Nature of the Trade:
The manner in which the goods or services are marketed, sold or rendered and the types of consumers that are targeted. By definition, all trademarks are used in a marketplace and sometimes the very specific nature of the relevant market can determine whether confusion is likely. This may include a consideration of the lines of trade for the specific goods or services. It may also include a consideration of whether consumers are likely to purchase the associated goods or services with deliberate care (i.e. household appliances) or without much attention to detail (i.e. groceries).

For instance, it was recently determined that different businesses may adopt similar trademarks for bicycle tires and automobile tires without resulting in confusion, because they are rarely sold in the same lines of trade. However, it seems doubtful that different businesses may adopt similar trademarks for clothing and jewelry without resulting in confusion because those wares are routinely sold in the same lines of trade.

The Degree of Resemblance:
How similar the trademarks are in appearance, sound, or the ideas they suggest. This can include an examination of both the visual and auditory elements of the marks.  

Although their appearance is a consideration, the resemblance of the two trademarks is not limited to a strict comparison of their appearance. In addition, we must also consider: (i) their resemblance when sounded; and (ii) their resemblance in ideas or meaning.

For instance, GOOGLE and GUGAL sound alike so they may be considered confusing as trademarks even though they have a different visual appearance and meaning. Similarly, HURRICANE and TYPHOON have a similar meaning so they may be considered confusing as trademarks although they do not resemble each other in appearance or sound.

While we would like to offer simple answer to this seemingly simple question, the answer as to whether two trademarks are confusing can only be determined after considering all of the facts and surrounding circumstances.

In these situations, it is critical that you seek legal advice as soon as possible and preferably from a lawyer who has experience litigating disputes in this specialized field.

To preserve exclusive rights in your own trademarks, it is important for you to take steps to stop any improper use of your trademark and any unauthorized use of confusingly similar trademark. When accused of violating the trademark rights of others, it is important to investigate the accusations in a timely manner and, if the allegations have merit, take steps to discontinue use of the subject trademark to minimize any claim for damages against you.

Since the parties are often competitors in the marketplace, they may be highly motivated to succeed in such disputes. In some cases, the potential damages are substantial. Consequently, such disputes can be highly adversarial.

Cease & Desist Letters:
In most cases, a lawsuit is preceded by the exchange of correspondence between the parties to determine whether the dispute can be amicably resolved without the expense and risk of court proceedings.

The intellectual property owner (or their legal counsel) will first send a cease and desist letter to the allegedly infringing party. This letter generally serves two purposes:

1. alerting them of the alleged violation; and
2. requesting their voluntary compliance with a set of demands, which may or may not include the payment of a sum of money for damages or unlawful profit.

The recipient may or may not respond. Any response is then evaluated to determine whether a lawsuit is warranted or the parties should pursue settlement negotiations.

Lawsuit:
Generally, the primary purpose of a lawsuit for trademark infringement is to seek an injunction from the courts preventing or prohibiting further infringement of the injured party’s exclusive rights. The secondary purpose is for the injured party to recover profits or damages from the infringing party for any past infringement.

Like other forms of litigation, a trademark infringement lawsuit is formally commenced when the allegedly injured party files a written claim with a court. In Canada, most intellectual property lawsuits are decided by the Federal Court and, on average, take from one to three years to complete if pursued through to the conclusion of a trial.

Injunctions:
In trademark litigation, the first question for the plaintiff to address is often whether to seek an interlocutory injunction restraining the defendant's use of the subject trademark pending a full trial on the merits. The courts are generally reluctant to grant such injunctions unless the allegations have merit and the defendant’s actions are causing irreparable harm to the plaintiff. If granted, the plaintiff will be required to compensate the defendant for any losses it suffers if the defendant successfully defends itself and the injunction is overturned after a full trial on the merits.