It’s too early for me to worry about trademarks, right?
If you are operating a business in Canada, or you are planning to in the near future, you should be thinking about trademarks. It’s very unfortunate that business owners are advised about business name registrations, HST numbers and the like, but not advised of the perils of not properly searching the availability of a proposed name and taking the steps to own it as a trademark.
Today’s blog was co-written by Cynthia Mason, a Lawyer and Trademark Agent with Mason PC in Ottawa, and the Founder of Markably, an on-line DIY way to register your own trademarks.
1) I am just starting out with my business. It’s too early for me to worry about trademarks, right?
It’s never too early to be thinking about owning and protecting your trademarks. Your first thought about trademarks should really be when you select your business name. You want to ensure that you are selecting a name that is capable of functioning as a trademark, and by that we mean something that is not descriptive of your products and services and is not confusing with anyone else’s trademark. Once you are confident the name is available for your exclusive use, you should claim ownership of it with a trademark registration.
2) What is a trademark anyway?
A trademark can be anything that you use to set your products or services apart from everyone else’s. There are three main types of trademarks that most businesses, big or small, consistently use. They are (a) names, (b) logos and (c) taglines.
3) Why do I even need to worry about protecting my trademarks? That’s an issue for bigger businesses than mine.
Trademarks are what the public uses to find your products and services in the marketplace. So regardless of the size of your business, you need to ensure that the public isn’t confused between your trademark and someone else. Trademark law is a great equalizer between businesses with different depths of resources. So long as you are the first business to use a trademark and you have registered it as your trademark, which is not expensive to do, you have the power to stop all others from causing confusion.
4) The mechanics: How do I go about registering a Trademark?
To start the registration process, you file an application with the Canadian Intellectual Property Office (CIPO) and that application must contain the trademark, the applicant’s name and address, and a classified description of the goods and/or services that will be sold in connection with the trademark. Once filed, CIPO will examine the application for compliance with trademark laws and regulations, and if satisfied the application complies, they’ll approve it and advertise it for any public objections. If none are raised, the application is allowed and registered for a 10-year term, which can be renewed indefinitely.
The trademark registration process is somewhat lengthy in Canada, due to a delay in examination, and it will take about 2.5 to 3 years from filing the application to obtaining the final registration.
5) If I have more than one trademark, should I register them all at the same time?
Each trademark must be the subject of its own registration, and you should register all your trademarks. But if your budget is tight, your first priority should be to register the name that appears on your products or in advertising your services, as this is the main trademark that the public uses to distinguish your products and services from everyone else’s. You next priorities for registration should be your logo and any taglines or secondary product or service names.
6) If I register it, where is it good for?
Trademark registrations are country specific. So, if you only register your trademarks in Canada, you only own them in Canada. That registration does not grant you rights in any other countries. You should register your trademarks in every country where you are actively marketing your products and services.
7) What does it cost and how long does it take?
This isn’t easy to answer in a few words because it requires an explanation of the government fee structure and the different levels of legal assistance you can obtain.
8) What are the alternatives to registering a trademark?
Here are 3 examples of how real-life small businesses approached trademarks:
1.Not registering.
Using an unregistered trademark limits your ability to stop others from using the same or a confusingly similar trademark. In every instance where you try to stop a confusing use, you’ll have to prove through convincing evidence that you own the trademark and that they are going to cause confusion and damage.
2.Registering later when the business has more money.
Many businesses wait until they are comfortably making money before they take steps to register their trademarks. There are risks to this approach. First, until you have a registration, you are using an unregistered trademark and your ability to stop others from using a confusing trademark is limited. Second, it takes between 2.5 to 3 years to go through the registration process, and while your application is pending with CIPO, you have only an unregistered trademark and your ability to stop others from using something confusing is limited.
3.DIY registering.
Trademark owners can DIY a trademark application and doing this is better than doing nothing to claim ownership of your trademark! However, registering trademarks requires knowledge of trademark registrability laws as well as how to classify goods and services. If you don’t get these things right in your application, you will receive objections and your application could potentially be refused all together. Speaking with a Trademark Agent in advance is well-worth your investment.
9) More questions? Speak to an expert!
There are many elements of intellectual property law: trademarks, copyright, and patents. Each of them is a unique area of law.
It is best to consult with an experienced lawyer or Trademark Agent to look at your asset picture. If you have any questions, reach out to Cynthia Mason directly at cynthia@masonpc.com.
Amee Sandhu has been a business lawyer in Ontario for 20 years. She created Lex Integra Professional Corporation in 2019 and focuses exclusively on business law and corporate ethics.
In her current practice Amee advises clients on commercial, corporate, integrity, anti-corruption, ethics and compliance, and supply chain risks.
Lex Integra:
Understand your risks. Perform with Integrity.
The purpose and contents of this blog is to provide information only, and it does not constitute legal advice. Reading this blog does not create a solicitor-client relationship between the reader and Amee Sandhu or Lex Integra. It is recommended to engage (hire) a lawyer if you require or are interested in legal advice.
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