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Protecting Your Intellectual Property

For many businesses today, intellectual property plays an increasingly important role. The value of intellectual property to a business can be significant. Think about the most popular brands. Chances are, one of the first things to come to mind is the design, or ‘look’ of that brand. Logos, images, and phrases are repeatedly displayed in advertising and on packaging until consumers come to associate your product or service with a particular design, look, or image. This is why trademarks are so important in marketing. Trademarks are a powerful tool to differentiate your products from those of your competitors.

What is a trademark?

A trademark can be a word, phrase, or design. Most famous brands have a family of trademarks associated with their product.

Why register a trademark?

You can use a trademark without taking the step of registering the phrase or design as a trademark. Registering the mark with the Intellectual Property Office, however, does give you rights that you would not otherwise enjoy. Once a trademark is registered, it is evidence that you are entitled to use your mark throughout Canada in association with specified wares or services. A registered mark protects your right to the exclusive use of a word, phrase, or design in association with a particular product or service. The degree to which your right to exclusivity is protected will vary depending upon the distinctiveness of the mark itself.

Provided it is being used as a mark within the meaning of the Trademarks Act, you can also register an internet domain name as a trademark.

What if a trademark isn’t registered?

Just because a trademark isn’t registered doesn’t mean that you don’t have common law rights to the use of a mark. If you have used a mark in association with services or wares, and you can establish that consumers associate the mark with the wares and services you provide, you may have acquired common law rights. These rights can protect you against other businesses using your mark, or a similar mark.

Generally speaking, it is preferable to register a mark with the Trademarks Office since it puts others on notice that you have been using the mark, and that you are entitled to exclusive use of the mark. If you do not register a mark, you bear the onus of proving that you have acquired a right to exclusive use of the mark for your wares or services.

When should you apply for a trademark?

We would always recommend that you apply for a trademark before starting to use it in relation to particular wares or services, particularly if you are spending significant time and money on advertising, or packaging, which incorporates the mark. It can take at least a year for a trademark application to be approved by the Trademarks Office. And, since the Office operates on a ‘first come, first served’ basis, the sooner you apply, the better.

How can a trademark agent help?

If you want to know if your mark is a ‘strong’ mark (and, therefore, more likely to be approved by the Trademarks Office), an agent can prescreen the mark to see if there are any other similar, or confusing, marks already being used.

An agent can prepare the application for registration to ensure that you are protecting all of the wares and services for which the mark will be used. The wares and services need to be drafted according to the Wares and Services Manual, or the application may be rejected. If the wares and services are not properly drafted, you will not be fully protecting your entitlement to use of the mark. The Trademarks Office will not review your application to determine if it protects what you want – it will only review the application to ensure that it complies with the legislation.

If you have already registered your trademark, an agent can tell you about your options should a competitor begin infringing upon your use of the mark. When you own a trademark, it is important to police the marketplace to make sure that others are not using your mark. If you fail to take proactive steps to protect your entitlement to the mark, your mark will be weakened and become less distinctive.

An agent can advise you how to ‘use’ your mark so that your rights continue to be protected. Marks need to be used within the meaning of the Trademarks Act, which, in the case of wares, means that the mark must be placed on the packaging. In the case of services, use of a mark means that the mark needs to appear in advertising for the product.