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Protecting Your Brand. Using Trademarks as a Business Tool.

What is a Trademark?

A trademark is your business's brand. A trademark could be a logo, name, slogan, colour, shape, sounds or any combination of these. Examples of trademarks include: the Nike "swoosh design", Molson's "I am. Canadian", Apple's "iPod" and the Vancouver Canuck's logo.

Why Register a Trademark?

Just as a marriage can be legally registered or remain common law, so can a trademark. Registered trademarks are enforceable across Canada, even if your business is restricted to a certain city or province. Your common law rights in respect of an unregistered trademark, however, are restricted to the specific geographic area where you conduct business.

Additional advantages to registering a trademark include:

  • If anyone attempts to use a similar trademark, you will be able to initiate an infringement action under the Trademarks Act an owner of an unregistered trademark may only rely on "passing off" proceedings in which the plaintiff has a more onerous burden of proof.
  • Licensing your trademark to other parties such as franchisees is much easier if registered.
  • Trademark registration is an asset in itself, adding value to your business.
  • Trademark registration can be important in registering and/or maintaining an internet domain name.

A common assumption is that once you have incorporated provincially or federally you have unlimited rights to that corporate name. However, if the public is likely to confuse a corporate name with a trademark which another business is already using, then the owner of the trademark will likely be able to prevent use of the corporate name.

What is a good trademark?

It is important to choose trademarks that are distinctive and not confusingly similar to trademarks already in use. Doing so will give you the strongest possible rights against new competitors. The most protectable marks are those that are fanciful (words such as "Kleenex" or "Kodak" that have no meaning) or arbitrary (real words that have nothing to do with the identified products or services, like "Apple" for computers). Creative and unusual design elements can further assist in establishing your brand and trademark protection.

Going International

If you are planning to sell your products or services in other countries, you should also consider registering your trademark for each of those countries.

Why Use a Trademark Agent?

Registering a trademark is complicated and time consuming. An experienced trademark agent can help you register a strong trademark, thereby, saving you time, money and angst. A weak trademark will leave you vulnerable to legal issues such as "cease and desist" letters and court action.

For more information with respect to the process of registration of trademarks in Canada, the United States or other countries, contact Tamara Huculak, lawyer/associate counsel and registered trademark agent at BRAWN KARRAS & SANDERSON 604 542-5344, or by email at thuculak@bkslaw.com.