Other trade
marks include acronyms eg., IBM, or AT & T, and surnames, such as
"Ford" or "Smith's". Surnames are, generally speaking, not
good trade marks for use by a start‑up business.
In general,
surnames are not truly "distinctive" of a business, or product, and
may not be registered as trade marks without satisfying a very heavy
burden of proof.
There are
other words which should not be selected as trade marks, by start‑up
businesses. These include geographical place names, if they
have any connection with the product, and descriptive words, which
describe the product itself or what it does.
Logos are
self‑explanatory. A well designed logo can be of great benefit
in identifying a product. A typical example is the so‑called
"Golden Arches" of McDonald's Restaurants.
TRADE
MARK SEARCHING
A
Trade Mark should ALWAYS be carefully searched, before it is used.
Be sure and obtain advice from a Registered Trade Mark Agent, or a
lawyer knowledgeable in Trade Marks, before finally selecting your
Trade Mark. Internet searches can be made in Canada, and in the
US.
The
addresses are shown in this booklet. Computer searches can also be
made through various search houses, some offering a twenty-four hour
response.
If
you locate a Trade Mark or name similar to your own, and if the
goods or the business are similar, then in general it is better to
select another Trade Mark.
There
is no sense in picking a Trade Mark which is too close to the Trade
Mark or Name of some other business. If you do, you may become
involved in expensive litigation, and you may be forced to change
the name.
Do
not choose a trade mark which has a slight difference in spelling,
from a registered trade mark. Minor changes are not enough to avoid
confusion. The whole purpose of a trade mark is to create your own
unique identity. Stay away from similar marks.Minor changes are
sometimes a suggestion that you are trying to get “a free ride” at
the expense of another company.
REGISTRATION
Once
you have selected a Mark that is clear, the next step is to register
it yourself. The purpose is twofold.
Registration gives public notice to others who make searches that
they should not use your Trade Mark. Registration also gives you
exclusive rights across the Canada for the use of the name, or logo.
PARTNERSHIP NAMES & COMPANY NAMES
Trade Mark Registrations are often confused with registrations of
business names and partnerships, and companies. This is a serious
mistake.
Registrations of partnerships and business names are merely a
formality for opening a bank account. Such registrations do NOT
provide any protection whatever for the exclusive right to the use
of the name.
Exclusive rights can be obtained ONLY by registering as a Trade Mark
in the Federal Trade Marks Office. The same is true of company
names. Incorporation does NOT give any protection for the company
name. Corporate names are granted without regard to Trade Marks.
So, you may incorporate, and still find you are infringing a
registered trade mark. This can be an expensive mistake. Always
insist on having a separate trade mark search made, before you
incorporate.
Trade
Marks are FEDERAL, company names are provincial, in most cases .
Trade
Mark Registrations are granted by the Trade Marks Office a branch of
the Federal Government in Ottawa, and similarly in Washington. A
good trade mark, when registered, can often by a valuable asset of
your business. In rare cases a small business may have registered a
trade mark and used it.
Later
a multi-national corporation may decide they like that mark. They
may make an offer to buy the name. This may be rare but it has
happened and will happen again.
The
small business may find itself receiving a very large sum, for what
they thought was of little importance. This cannot happen though,
unless you register your trade mark.
APPLICATION
An
application for the Trade Mark is first of all filed with the Trade
Marks Office and the fee paid. The Trade Marks Office officials
will then examine the application, and search earlier Trade Marks.
They may make objections. These objections must be answered within
a time limit. Once they are answered the Trade Mark is then
advertised in the Trade Marks Journal. If no other person files an
opposition to the Trade Mark, within sixty days, then the Trade
Marks Office will request a registration fee. Once this is paid they
will automatically register the Trade Mark.
The
procedure can take up to a year.
The
forms and regulations are available on the Internet.
Do
not attempt this for yourself. The rules are highly technical. It
needs years of experience to select the right form and file the
application in the right way.
If
there is anything mistaken with your application, your registration
will be worthless.
Use a
Registered Trade Mark agent experienced in this field. It will save
you many times the cost of professional fees, to get it right first
time.
AFTER
REGISTRATION
Once
registered, a Canadian Trade Mark remains in force for 15 years and
can be renewed every 15 years upon payment of a fee.
U.S.
renewals are more complex. Check with you lawyer.
