A trade-mark is worth much more than the word, image or slogan embodied in it. It serves to distinguish a business and is integral to its reputation. The choice of a trade-mark is the result of strategic planning and effort and reflects the philosophy advocated by the business, hence the importance of protecting it. Although the right of ownership in a trade-mark is acquired through the use thereof, and registration is not mandatory, a registered trade-mark has undeniable benefits for a business.
Registration gives the owner the exclusive right to use the trade-mark throughout Canada for a period of 15 years, even if, in practice, the trade-mark is solely used in Quebec. Thereafter, registration can be renewed indefinitely every 15 years. Furthermore, registration is a direct proof of the right of ownership. Thus, in any litigation aimed at establishing the right of ownership in a trade-mark, the registered owner is not required to prove his right the burden of proof is on the applicant. On the other hand, the use of an unregistered trade-mark can lead to protracted litigation to determine the rights to the disputed trade-mark.
Upon registration, the trade-mark is automatically entered in the register of trademarks at the Canadian Intellectual Property Office ("CIPo"), which is a way of publicizing the exclusive rights claimed in the trade-mark. Not only is this register accessible to the public, but CIPO examiners also refer to this tool when considering any new trade-mark registration application. Thus, the examiner will raise an objection, of his own motion, against a new application if it is likely to cause confusion with a trade-mark already on the register, thereby providing a degree of protection for existing registered trade-mark owners.
Trade-marks are one of the most important assets of a business from an economic standpoint, and the registration is valuable in itself for purposes of the sale of a business or when seeking financing.
While registration is optional, it is highly recommended. The process is not costly or tedious and is undoubtedly the best way to avoid litigation over the right of ownership to the trade-mark. An ounce of prevention is worth a pound of cure!
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
