| As more and more companies are seeking to | | | | such factors as the elements of the trade-mark |
| distinguish their products and services in the | | | | (where, for example, the trade-mark comprises more |
| marketplace by registering their names, slogans or | | | | than one word), different spellings of the word(s) |
| designs as trade-marks, many companies which do | | | | comprising the trade-mark and the sound of the |
| not retain a Canadian lawyer or trade-mark agent | | | | trade-mark. This is referred to as a |
| often make fundamental mistakes. Among the | | | | “comprehensive search” and is advisable to |
| most common mistakes are the following. | | | | ensure that the trade-mark is not confusing with a |
| 1. A Company Name is not a Trade-mark. | | | | registered trade-mark and therefore unregistrable. |
| A company name is the legal name under which a | | | | 4. Some Trade-marks are not Registrable. |
| company carries on business. However, unless the | | | | Not all trade-marks are registrable. Among the |
| company name is used as a trade-mark, it cannot be | | | | trade-marks that are not registrable under the |
| registered under the Canadian Trade-marks Act. For | | | | Canadian Trade-marks Act are: |
| example: | | | | • trade-marks that are clearly descriptive of |
| • Acme Insurance Ltd. markets life insurance | | | | the character or quality of the products or services, |
| under “Goodlife Insurance”. “Acme | | | | • trade-marks that are deceptively |
| Insurance Ltd.” is the company name, | | | | misdescriptive of the character or quality of the |
| “GoodLife Insurance” the trade-mark. | | | | products or services, |
| “Acme Insurance Ltd.” is not used as a | | | | • trade-marks that are clearly descriptive or |
| trade-mark, “GoodLife Insurance” is. | | | | deceptively misdescriptive of the origin of the |
| • Acme Insurance Ltd. markets life insurance | | | | products or services, |
| under “Acme Life”. “Acme” is part | | | | • trade-marks that are the name of the |
| of its company name, but it is also used as a | | | | products or services, and |
| trade-mark to distinguish its insurance policies from | | | | • trade-marks that are confusing with a |
| those of other insurance providers. | | | | registered trade-mark. |
| The important point here is that the registration of a | | | | There are a number of tests which have been |
| company and the registration a trade-mark are two | | | | developed by the courts which are employed by the |
| distinct processes. Federal and provincial company | | | | Trade-marks Office in determining whether a |
| offices do not search the Trade-marks Office | | | | trade-mark is registrable. In general terms, |
| database to determine if a proposed company name | | | | however, where an application for registration of a |
| is a registered trade-mark; nor does the Trade-marks | | | | trade-mark falls within one of these categories, the |
| Office search federal and provincial company offices | | | | trade-mark will not be registrable. |
| to determine if a proposed trade-mark is registered | | | | 5. International Classifications Don’t Apply. |
| as a company name. The two processes are | | | | Products and services which are used in association |
| unrelated, and the trade-mark must be registered | | | | with a trade-mark must be described in ordinary |
| separately. | | | | commercial terms. In many countries such as the |
| 2. There’s no Requirement to use a | | | | United States this is done by using International |
| Trade-mark before Registering. | | | | Trade-mark Classes. The International Trade-mark |
| Many companies believe that they must commence | | | | Classes are categorized into 45 classes, Classes 1-34 |
| use of their trade-mark before registering it. In | | | | relating to products and Classes 35-45 to services. |
| Canada, as in many other countries, trade-marks may | | | | Canada does not use this system and therefore |
| be filed on the basis of “intention to use”. | | | | trade-marks must be described in ordinary |
| An application which is filed on this basis must specify | | | | commercial terms for Canadian filing purposes. |
| the products and services that the company intends | | | | For example, Class 32 refers to “light |
| to use in association with the trade-mark. Once the | | | | beverages” which are enumerated as: |
| application has been filed, the company generally has | | | | “beers; mineral and aerated waters and other |
| three (3) years from the date of filing to file a | | | | non-alcoholic drinks; fruit drinks and fruit juices; syrups |
| Declaration of Use confirming the use of the | | | | and other preparations for making beverages”. |
| trade-mark in association with the specified wares | | | | For Canadian filing purposes, the wares |
| and services. The Declaration of Use may be filed | | | | “non-alcoholic beverages” require further |
| anytime within the three (3) year period, but must | | | | specification, for example carbonated drinks, colas, |
| not include any products and services that have not | | | | energy drinks, sports drinks, drinking water, |
| been used in association with the trade-mark. | | | | fruit-based soft drinks, fruit juices, hot chocolate, |
| 3. Search before Using a Trade-mark. | | | | milk, non-dairy soy, coffee or tea. |
| It is always advisable to conduct a trade-mark search | | | | 6. Copyright may reside in Trade-marks and |
| before commencing use of a trade-mark. This will | | | | must be Acquired. |
| ensure that the trade-mark does not infringe another | | | | Where a trade-mark is in the form of a design, the |
| trade-mark and will avoid the wasted expense of | | | | design will be subject to copyright protection, as well |
| such things as advertising and labeling. | | | | as trade-mark protection. If a trade-mark owner |
| A trade-mark search may be conducted through the | | | | retains a graphic artist to develop and design a |
| Canadian Intellectual Property Office Trade-marks | | | | trade-mark, the trade-mark owner should obtain all |
| database by inserting the trade-mark in the search | | | | rights to the design, including the ability to make |
| text box and selecting the appropriate search field. | | | | changes to the design. This is generally done by |
| If the search does not reveal an exact match, a | | | | means of a simple contract known as an |
| secondary search should be conducted based on | | | | “Assignment”. |