A 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 photographic  services.

A trade mark may be either registered or unregistered.  Rights 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 infringer’s  activities 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 advantages.  One 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 obtaining  any 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 registration.  The 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 mark.

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  “â” may also be used for registered trade marks , but should not be used for unregistered marks.