ALL ABOUT TRADE-MARKS

The purpose of this section is to provide general information about trade-marks and the rights attached thereto.

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The trade-mark agent is the sole professional authorised to act before the Trade-marks Registrar in the name of the applicant. He/she has qualified as a trade-mark agent after succeeding the trade-mark agent exam before the Trade-marks Office. Lawyers and notaries may qualify as trade-mark agents when they show they have a significant consecutive two years trade-mark practice before the Trade-marks Office.

Creating a company is giving birth to a legal entity in order to dissociate individual(s) from the company. It is not necessary that a specific name be given to a company as it may be a numerical company (1234567 Canada Inc.). A numerical company may be known under another name. In such a case, only the use of the name enables the owner to benefit from the Common Law Rights.

Franchising is a common and highly valuable commercial activity when properly managed. Registration of a trade-mark allows the Registered owner to exclusively use the trade-mark in Canada. However, the Trade-marks Act contains special dispositions wherein other traders, apart from the Registered Owner, may use the same trade-mark. Such use must, however, be governed by the Registered Owner as the Franchiser and the franchisees must follow the rules. Otherwise, the trade-mark is considered diluted in commerce and both the Registered Owner and franchisees loose their exclusive right to use the trade-mark.

Before giving someone the authorisation to create a hyper-link with your Web site, it is recommended to ensure that your Web site name (domain name) is not used in a way that may affect the integrity of your corporate image.

Everybody doing business under his/her own name or another business name must register same with the Court House of his/her legal district. Such registration, however, does not guaranty that he/she has a legal right to use such name over a registered trade-mark in Canada. The owner’s right on a business name is only confirmed by the use of same (Common Law Rights) and must be evidenced in Court in case of litigation with a registered trade-mark.

Wherever a Canadian trader wishes to export his wares, the first step to undertake is to ensure that the trade-mark may be used and registered in the target country or countries. Further, the Canadian trader should register the trade-mark in the concerned country and give a licence to use the trade-mark to the foreign distributor(s). This insures the Canadian trader the right on his trade-mark and ease the proceedings in refraining a distributor from using the trade-mark should conflicts arise. Please refer to Franchise / Licence to use a trade-mark or more details.

A trade mark is a word, symbol, number, sound or two or more of these components, used to distinguish the wares or services of a trader from those of others. A trade-mark is a valuable asset as it is a guaranty for the consumer as to the consistency in the quality and origin of the wares or services.

When a trade-mark is registered, it means that the trade-mark may be exclusively used by the Registered owner. The Certificate of Registration of a trade-mark is obtained in approximately two years after the filing of an application for registration of the mark. The Registration is valid for fifteen (15) years and may be renewed indefinitely.

Confusing trade-marks may be registered if they are owned by the same person. They are called "associated trade-marks" and must be owned by the same person/entity. Therefore, the owner may not sell an associated trade-mark without selling all the "associated trade-marks". When an associated trade-mark is assigned, all the associated trade-marks must be included in the assignment document. If not, the Registrar refuses to register the assignment. See Selling or Buying a trade-mark for more information on this topic.

The Internet address of a web site is called an Internet domain name. The Internet domain name is often the name or trade-mark of a company. It is therefore highly recommended that, before choosing an Internet domain name, a search be performed on the Trade-marks Register in order to insure that such domain name will not infringe the right of a Registered trade-mark.

The signs ® or MD (in French - marque déposée) may be used when the trade-mark has been registered with the Trade-marks Office. When a trade-mark is not registered or is in process of being registered, the sign TM (trade-mark) or MC (in French - marque de commerce) may be used.

* The © symbol is used to indicate the ownership over a copyright

When a company owning trade-marks is the subject of a sell, special considerations should be made for the intellectual properties. It must be clear whether the trade-marks are sold with the company or not. Where the trade-marks are registered or in process of being registered with the Trade-marks Office an assignment, between the actual owner and the new owner, must be filed with the Trade-marks Office.

IN ALL CASES, IT IS HIGHLY RECOMMENDED THAT YOU CONTACT YOUR TRADE-MARK AGENT.

If you have additional questions, please contact us.


Contact us at 514 454-5300 or toll-free at 1 844 454-5300 for an exploratory consultation.