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Registered vs Unregistered Trademarks in Canada

Create Time 2018-08-31 12:08    Views:805

Trademark rights provide owners with the exclusive use of the trademark. While both registered and unregistered trademarks are protected under Canadian Law, trademark registration provides benefits including brand enhancement and stronger legal basis of enforcing the rights associated with trademark ownership.

What is a Trademark?

Both registered and unregistered trademarks are “marks” associated with the goods and services of a person or organization. It can be one or several words, sounds and designs (or a combination of these elements). The mark distinguishes a good or service from others in the marketplace.

Trademarks can be divided into three different categories:

  1. Ordinary Marks: Ordinary marks consist of words, sounds, designs or these elements combined to create a distinguishable service or good.
     

  2. Certification Marks: Certification marks are used with respect to groups of people or organizations to demonstrate that a good or service meets a standard. For instance, the Fairtrade Canada trademark appears on products which are certified to meet the required standards of a fair-trade product. Another familiar example is CAA’s mark, demonstrating that the safety requirements have been established in meeting CAA’s guidelines.
     

  3. Distinguishable Guise: Likely what most associate as trademarks, Distinguishable Guises are shapes or logos used to indicate that a good or service is produced by a particular company. Think of the swoosh, the golden arches, or the doubled tailed mermaid.

Frequently, trademarks may have multiple components, such as a combination of words (a business name or product name), and a logo. Elements of trademarks can be registered separately or as the group (for instance words and distinguishable guise), however, separate registration does ensure each element carries exclusive rights.

Protection of Unregistered Trademarks

Unregistered trademarks are protected by the common law, or simply put, law derived from judicial decisions. The only cause of action available in the courts for infringement of unregistered trademark is through the tort of passing off.

To succeed in a claim of passing off, it is the plaintiff’s burden to demonstrate on a balance of probabilities that:

  1. there is sufficient goodwill or reputation attached through the trademark to the plaintiff’s goods or services,
     

  2. the other party deceived consumer(s) that their good/service was attached to the goodwill or reputation of the plaintiff, and
     

  3. that there are damages, either in the form of actual or potential loss.  

Court decisions of one province are not binding on the courts of other provinces.  Therefore, the recognition of the rights associated by a court in one province’s over the plaintiff’s rights over the unregistered trademark does not necessarily solidify enforcement by other courts in Canada.

This is not to say that common law protection is without benefits. If a mark does not fall within scope of what may be protected under the Trade-marks Act, it is possible that common law rights may provide a layer of protection. In addition to this, if it is found that a problem exists with the registration, the common law may provide a forum for compensation.

Enhanced Legal Protection of Registered Marks

Trademark registration provides the owner with the sole right to use the mark in Canada for 15 years, at which time the registration may be renewed.

The value trademark adds to a business is largely related to the enhanced legal protection registration carries. Registration includes the following legal benefits:

  1. Proof of Ownership

  2. Acts as a deterrent from others using your trademark without permission, and

  3. Increases and strengthens enforcement options

Proof of Ownership

A registered trademark is a trademark that has been entered into Registrar of Trademarks. The registration serves as evidence of sole ownership of trademark. If a dispute arises, unlike common law protection over trademark, the burden is on the party challenging ownership to demonstrate that sole right does not exist.

Registration as a Deterrent of Unauthorized Use

In addition to the visual deterrent of the registered trademark symbol, “®” the process of registration itself acts as a deterrent. As it is key in initiating trademark registration to conduct of a search of the mark one is seeking to register, a returned result in the Registrar, may prevent use of a similar mark by an organization.

Increase of Enforcement Options

Registration of Trademark can simplify the process for a trademark owner in the event of a dispute or challenge of trademark.

Validity

Registration in itself serves as presumption of validity. What this means is that in the event of a dispute, a challenger of the trademark must rebut the presumption that the trademark is valid by trademark registration is invalid.

Increase of Causes of Action

As previously mentioned, pursuing a claim of infringement of an unregistered trademark is only available through establishing a claim of passing off.  In contrast, the owner of a registered trademark may initiate an action for:

  1. An identical mark being used in association with similar goods and services,

  2. A trademark that can be confused by the consumer with the registered trademark, and

  3. The use of a trademark in anyway depreciates value of the trademark owner’s reputation.

Therefore, an action of using a trademark without authorization in itself is a basis of claim with a registered trademark, negating in claims of the first two categories the need to demonstrate the reputational association or that damage has/will occur.

While the laws in Canada can be viewed as overlapping in terms of legal protection over registered and unregistered marks, trademark registration increases an owner’s avenues to avoid disputes, or when they occur, increases the owner’s chances of a favorable outcome. This protection in turn, adds value to the mark and consequentially the owner’s brand.

Disclaimer:  This website is not intended to offer legal advice or to be a substitute for a consultation on a case by case basis with an attorney.  The information provided above is meant for informational purposes only and may be subject to change. 

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