Why Registering your Trade-marks is a Useful Business Practice ?

You have a business that is running smoothly. Perhaps you have been in business for a number of years, or perhaps you are just starting to get your business idea off the ground. Whether your company has been around for some time or you are new to the field, there are certain components of a successful business that should not be neglected. Intellectual property ("IP"), a buzzword that we often hear but do not always appreciate, can be a vital aspect of a business. The significance of IP varies depending on the type of business, in some cases it’s much more important than in others. In the pharmaceutical industry, for example, IP is hugely important. An enormous amount of research and development goes into the discovery of new combinations of chemicals to address health concerns. IP rights permit inventors to profit from their R&D investments and to exclude others from so doing for a set period of time. Aside from patents (and the obvious example of the pharmaceutical industry), trade-marks are important elements of a business and are more broadly applicable than patents.

A trade-mark is a word, symbol, or design, or any combination thereof, which serves to distinguish one person’s wares or services from those belonging to another. This important identification often determines whether potential clients will choose to bring their business to one company versus another. Distinguishable trade-marks are more memorable and will leave a lasting (hopefully positive) impression on clients. Even very simple trade-marks, such as Nike’s swoosh design, have proven to be hugely successful marketing tools. A well-chosen trade-mark can become one of the most important assets of an established business.

There are three types of trade-marks that you should be aware of:

Ordinary marks: A combination of words and/or symbols identifying wares or services.

Certification marks: Words and/or symbols that identify wares or services that have met a certain standard. For example, the "Fair Trade Certified" certification mark is used to indicate goods which have met the established criteria for being labeled "Fair Trade."

Distinguishing guises: The shaping, wrapping, or packaging of wares that distinguish them from others.

What is the difference between ® and ™? Some trade-marks are registered and some are not. Logically, the ® identifies those that have been registered with the Trade-marks Office of the Canadian Intellectual Property Office (CIPO). Many businesses operate using multiple trade-marks without ever registering those marks. Simply using your mark for a period of time can establish Common Law ownership. Registration, however, has its advantages, a major one being that upon registration of your trade-mark, you create a presumptive ownership in that mark. Anyone who wishes to challenge the ownership of your mark bears the burden of fighting the battle, while you are presumed to be the lawful owner. In Canada, registration lasts for 15 years, during which period you have an exclusive right to use your registered mark. Upon expiry of the 15 years, registration may be renewed an unlimited number of times, with each renewal lasting 15 years.

Registering a trade-mark provides notice to others that the trade-mark is taken. If, at a time subsequent to your registration, a company adopts a trade-mark that is considered confusingly similar to yours, that company cannot rely on ignorance of your trade-mark as a defense. CIPO maintains an up-to-date trade-marks database. It is free for anyone to search that database to see what trade-marks have been registered. Registration becomes especially important as a business grows. Assume that you have a mark that is not registered. Another company is operating with a similar mark that is registered and decides to move its business into your area. The fact that they have registered their mark and you have not may result in a court order prohibiting you from carrying on using your mark.

Registration is relatively inexpensive and is a precaution that is well worth pursuing. To apply for registration, there is a $250 non-refundable fee. If your application is approved, you must then pay $200 to have your certificate of registration issued. Trade-mark agents are experienced in preparing applications that will meet the requirements of the Trade-marks Act, which may prevent potential problems and save you money in the future. A trade-mark agent is particularly recommended if you plan to register your marks in other countries.

Upon submission of your registration, CIPO will publish your application in the Trade-marks Journal. This offers members of the public an opportunity to object to your application before your mark is registered. An opposition may be made by any person who has a valid reason for doing so, within 2 months of the publication date. Opposition may be a long and complex procedure, so having an agent is highly recommended. The Trade-marks Office may deem an opposition to be frivolous, in which case it will be dismissed. If any opposition issues have arisen and they are resolved in your favor, your application will be allowed and your certificate will be issued. As long as you continue to use your trade-mark in Canada and file your renewal fees as they become due, your mark is fully protected.

There are a few noteworthy rules regarding trade-mark applications:

Proper Names: Generally speaking, a person’s name cannot be registered on its own. The basic rule is that a name must be recognizable as more than just a name if it is to be registered.

Descriptive words: You cannot register a word that is merely a description of the wares or services you’re offering. Certain things have inherent characteristics, and it is not accepted for one person to try to claim the right to that characterization. In addition, a mark cannot be "deceptively mis descriptive." What this means is that you cannot improperly describe some aspect of the wares or services. For example, you would not be permitted to register a trade-mark for a business named "Homer’s Homemade Hamburgers" if the hamburgers were processed in a factory.

Origin: You must be careful when trying to register a mark that contains a geographical place. As a general rule, you can only use the name of a place in your description if your wares originate in that place. Marks that cause confusion: A mark will not be accepted for registration if it is likely to be confused with another trade-mark.

Offensive content: Any subject matter that is obscene, scandalous or immoral is prohibited from being registered. Official symbols: These are prohibited from being used without the consent of the authority responsible for the symbol. The United Nations emblem is an example of an official symbol. Take a moment to consider whether you have registered your company’s trade-marks. Registration is a simple business practice that can save you future headaches and money. For additional information, you can consult a trade-marks agent, the Trade-marks Act.

Stephanie Hamilton, Student-at-Law. BrazeauSeller.LLP is an Ottawa business law firm that provides expert legal counsel, innovative solutions and responsive service to its clients and is the exclusive Ottawa member of Meritas Law Firms Worldwide. http://ww.brazeauseller.com