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Brand Protection through Trademark Registration

The function of a trademark is to allow the end consumer to tell your products and services apart from identical or similar products or services of competitors.

Trademarks can be anything from words, logos, slogans, shapes of products, colours, and sounds.

The Canadian Trade-marks Act prohibits registration of trademarks that are descriptive; you cannot register (a) "coffee" for a coffee brand as this is the common name of the product or service; or (b) "warm" for a blanket, as this is a mark that describes such product or service.

Further, you are not able to register a trademark that is confusingly similar to another identical or similar mark previously used or registered in association with identical or similar products or services.

To decide whether or not to register a trademark, you should consider if it is worth fighting for. For example, if you received a cease and desist letter demanding you to stop using your trademark, or, if your competitor started using your trademark, or a similar version of your trademark, is it worth fighting for? In either case, a registered trademark significantly improves your chances to win a dispute.

You should also consider that a registered trademark is a valuable asset to your business particularly if you want to franchise, expand, or sell your business, as a registered trademark automatically protects your trademark across Canada.

Your business can use the TM symbol whenever it wishes to claim a trademark. You do not need to file any paperwork to receive permission to use the TM symbol. Use of the TM symbol puts your competition on notice that your business considers a mark to be your trademark.

The ® symbol may only be used after a registration certificate has been issued by the Trade-mark Office.

For further information or assistance in registration of a trademark in Canada or the United States, please contact Tamara Huculak, lawyer and registered trademark agent, by phone (604-542-5344), by email (thuculak@bkslaw.com), or visit www.bkslaw.com.