TM Basics

A trademark is a unique combination of words, designs, numbers, colours, shapes, holograms, moving images, sounds, scents, tastes, texture, positioning of a sign, or mode of packaging goods that distinguishes your business’ goods and services from a competitor. A trademark represents to the public the origin of the goods and services your company sells and protects your company’s brand and reputation.

The rights given by a Canadian trademark extend throughout Canada, but not to other countries. Similarly, foreign trademarks do not protect a mark in Canada. Trademark applications must be filed in each country separately.

That said, some common law countries, including Canada, have rights in unregistered trademarks. In Canada, this is called the tort of passing off. The Supreme Court of Canada held that the tort of passing off requires (i) the existence of goodwill (i.e., that consumers directly associate your goods or services with a distinctive feature that distinguishes your goods and services from your competitors); (ii) deception of the public due to a misrepresentation; and (iii) actual or potential damage to the plaintiff.

The tort of passing off can be more difficult and expensive to prove than infringement. Furthermore, there are more remedies available for a trademark owner. Accordingly, a company’s most important marks (logo, tagline, company name, etc.) should be registered as a trademark.

Generally, words, designs, numbers, colours, shapes, holograms, moving images, sounds, scents, tastes, texture, positioning of a sign, or mode of packaging goods (marks) can be trademarked as long as the mark is a unique and distinctive way of representing your company. That said, there are a number of marks that you cannot obtain a registered trademark for, including:

• name or surname of an individual who is living or has died within the last 30 years;
• marks that are clearly descriptive or deceptively misdescriptive in English or French;
• the name of the goods or services in any language;
• marks that are confusingly similar to a registered trademark;
• prohibited marks (for example, the Royal Arms, Crest or Standard, of any Royal Family or the Governor General, Red Cross emblem, foreign Country flags, portrait or signature of person who is living or has died in the last 30 years, the words “United Nations” and the UN seal, etc.)
• signs or combinations of signs that has, in ordinary and bona fide commercial usage, become recognized in Canada in relation to any goods and services; or
• protected geographical indications identifying wine, spirit, or agricultural product or food.

For information on whether your mark is registrable under the Trademark Act, please contact a trademark agent.

Unlike patents, trademark registration can occur at anytime. That said, filing as early as possible has advantages, such as preventing any subsequent applicants from registering a confusing similar mark. As discussed above, there are some rights at common law (passing off); however, these rights are regional in scope and do not protect the trademark across Canada. In contrast, trademark registration is direct evidence of ownership of that mark and can be enforced across Canada.