PRIMER ON TRADE MARKS
by Thomas Malyszko
A trade mark is used to distinguish a
business’ products or services from that of another. A trade
mark is usually a
name or logo/design under
which the product or service is known or marketed , such as
“EXXON” for petrochemicals and “KODAK” for films and
A trade mark may be either registered or
to an unregistered trade mark (called a “common law” trade
mark) arise through its use in a certain geographic area.
A business that has been using a trademark can prevent
others from using any confusing mark within the geographic area in
which it can establish that the public is familiar with the mark
and associates that mark exclusively with the business.
Trade marks are considered to be confusing
if their concurrent use in the same area would falsely
lead others to believe that the products or services
associated with such marks originate from a common
source. Factors which must be considered in judging confusion
include the degree of resemblance between the marks and the
similarity of the products or services provided.
The scope or “strength” of common law
trade mark rights may be difficult to establish because they
depend on the amount of
goodwill or reputation which has been acquired in the relevant
geographic area. This
presents a drawback in a court action to restrain an
because evidence must first be presented
to establish these rights before infringement can be
proven and any relief is granted.
In addition to common law protection ,
enhanced trade mark protection may be obtained
by registering the
mark under Canadian Trade –marks Act.
A registered trade mark is obtained by filing a trade
mark application with the Canadian Trade-marks
office and proceeding through an examination procedure.
Registration provides a number of
advantage is the presumption that the registered owner has
exclusive right to use the mark throughout Canada and not merely
in a specific geographic area .
Hence, reputation need not be proved to a court before
relief against infringers
anywhere in Canada.
Another advantage of registration is the
ability to “reserve” a mark by filing an application to
register a mark based on proposed use.
Registration is also highly advisable if a trademark
owner wishes to license a mark to another.
Registration of trade marks is restricted
to those that are either inherently distinctive or that have
acquired distinctiveness. Marks
such as names and
surnames of living individuals , and marks which are clearly
descriptive of the nature of the goods or services associated
with the marks ( for example, “Cakes” for a pastry shop),
are presumed not to be inherently distinctive.
Such marks may be registered only upon a showing of
acquired distinctiveness ( through use over time) .
Trade marks, and the trade mark registration
procedure , must be distinguished from business names
and their registration under a business statue.
The registration of a business name ( when , for example,
incorporating a company) is just notice of business name
business name registration in itself does not provide protection
against someone else that uses or registers a business name, or
a part of it , as a trade mark. In fact, many business
names are also trade marks.
Whether or not someone wishes to pursue
registration of a trade mark , a trade mark clearance search
should be conducted before a new trade mark or business name is
adopted. A search
is conducted to minimize the risk of liability from adopting a
trade mark or a business name which is confusing with someone
else’s registered trade
Lastly , marking is important to identify
that a particular name or logo/ design is being used as a trade mark and to preserve its distinctiveness.
Although there is no statutory marking requirement in
Canada, the symbol “ä”
should be used to identify a trade mark ( which is either
registered or not registered). The symbol
may also be used for registered trade marks , but should not be
used for unregistered marks.