The primary purpose of  a trade-mark is to identify the maker of a good or the provider of a service. Over time, a positive association with that trade-mark may make the mark extremely valuable to its owner.

In Canada, trade-marks are governed primarily by the Trade-marks Act .

Under the Act, a “trade-mark” means: (a) a mark used by a person who makes, sells, leases or hires goods or performs services, to distinguish them from the competing goods or services of others, (b) a certification mark, (c) a distinguishing guise, or (d) a proposed (as opposed to existing) trade-mark.

In order to obtain the protection of the Trade-mark Act, a person must register a trade-mark with the Canadian Intellectual Property Office.

It should be noted that trade-mark protection, in general, is based on use. That is, until there has been use, there is no basis for registration. There is an exception to this generalisation and it is an application for registration based on PROPOSED USE. This allows an applicant to create an appropriate mark, knowing that the time, energy and money that goes into such creation will not be lost should a subsequent applicant seek registration for a similar mark.

Registration, whether based on existing use or proposed use, commences with an application for registration where the mark, goods and/or services are identified and accompanied by an administrative fee paid to the CIPO. It is prudent to have the proposed trade-mark searched by a recognized search house, such as CompuMark Thomson prior to committing time and money to the application and to the use of the mark. The application is reviewed by CIPO analysts who must deterimine if the  application meets all of the requirements of the Act. It is not uncommon for an application to be amended several times in attempting to meet those requirements. Once the analyst is satisfied, the application is advertised in the Trade-marks Journal. Such advertisement gives existing trade-mark holders the opportunity to challenge the proposed registration if they feel it is in conflict with their own registered mark. If a proposed mark is challenged, the Registrar will review evidence filed by both parties and rule on whether to accept or refuse the proposed trade-mark for registration.

If a mark is accepted, it is registered to the applicant for 15 years on the payment of a registration fee.  The registration may be renewed every 15 years on payment of a renewal fee.

For more information on trade-mark registration in Canada, including current fees, see A Guide to Trade-marks, call me at 416 466-1487 or send me an email to: mkrys@filmlegals.com.