Brand Architecture
The strategic analysis and development of optimal relationship structures among multiple levels of company, brand, product, and feature names.

Brand Name
A name or symbol used to identify a seller's goods or services, and to differentiate them from those of competitors. Because a brand identifies a product's or service's source, thus protecting against competitors who may attempt to market similar goods or services, companies have an incentive to invest in the quality, consistency, and imagery of their brand. Branding dates back to ancient times, when names or marks appeared on such goods as bricks, pots, ointments and metals.

Coined Name
These include made-up names such as Exxon or Kodak. Also known as Neologisms. These names, if truly unique, can offer the strongest possible trademarks and are favored by trademark attorneys.

Descriptive Name
A name which describes a product, service, or company. Descriptive names are not protectable and typically are not favored by trademark attorneys.

Descriptor
Often used in conjunction with a coined/fanciful, arbitrary, or suggestive name, a descriptor literally describes the product or service being identified. A brand name used with a variety of descriptors across a product line is often a more economic strategy than that of giving every product or service its own proprietary name.

Full Legal Search
Trademark search conducted by trademark counsel, and encompassing all classes and countries of interest.

Linguistics
The study of the structure and development of a particular language and its relationship to other languages.

Morpheme
In linguistics, a meaningful morphological unit of a language that cannot be further divided.

Nomenclature System
A system that specifies and organizes the naming relationships among a company's brands, products, services, divisions, subsidiaries, etc

Phoneme
In linguistics, a set of closely related speech sounds (phones) regarded as a single sound.

Preliminary Availability Search
A of trademark databases of candidate names, conducted to eliminate obvious conflicts and increase the likelihood that a selected name will prove available once the full legal search is conducted.

Proprietary Name
A protectable name which one is able to own and trademark, as opposed to a descriptive name, which is not protectable or ownable.

Psycholinguistics
The study of how language is understood and interpreted and how and why the individual responds to discrete aspects of language.

Sound Symbolism
The study of the relationship between the sound of an utterance and its meaning.

Suggestive Name
A name built on or utilizing words or word parts which suggest or refer to the goods or services, but do not literally describe them. North Face and Microssoft are suggestive. Suggestive names are often protectable (unlike descriptive names), but may be weaker as trademarks than coined/fanciful or arbitrary names.

Trademark
A word, phrase, slogan, design or symbol used to identify goods and distinguish them from competitive products. Trademarks may be registered with any Trademark Office, and similar offices worldwide.

Trademark Classes
Trademarks are divided into 45 international classes, each comprising or composed of similar goods or services. Class 41, for example, consists of "Education and Entertainment," while Class 39 is for "transportation and storage." A name may be protected in multiple trademark classes, assuming each class is relevant to the product's or service's business area.

Frequently Asked Questions (Source : CIPO, Government of Canada)

What is a trade-mark?
A trade-mark is a word, symbol or design, or a combination of these, used to distinguish the goods or services of one person or organization from those of others in the marketplace.

Are there different kinds of trade-marks?
Yes, there are three basic types. Ordinary marks are words and/or symbols that distinguish the goods or services of a specific firm. Certification marks identify goods or services that meet a standard set by a governing organization. Distinguishing guise identifies the shaping of wares or their containers, or a mode of wrapping or packaging wares.

What is the difference between trade-marks and other forms of intellectual property?
Trade-marks are only one form of intellectual property that can be protected through federal legislation. The other forms are: patents, for new technologies; copyrights, for literary, artistic, dramatic or musical works, performance, sound recording or communication signal; industrial designs, for the shape, pattern, or ornamentation applied to an industrially produced object; and integrated circuit topographies, for the three-dimensional configuration of the electronic circuits embodied in integrated circuit products or layout designs.

What is the difference between a registered and an unregistered trade-mark?
A registered trade-mark has been approved and entered on the Trade-mark Register held by the Trade-marks Office. Registration is proof of ownership. An unregistered trade-mark may also be recognized through Common Law as the property of the owner, depending on the circumstances.

Why register a trade-mark?
Registration is direct (prima facie) evidence of exclusive ownership across Canada and helps ward off potential infringers. It enables you to more easily protect your rights should someone challenge them since the onus is on the challenger to prove rights in any dispute. The process of registration, with its thorough checks for conflicting trade-marks, will ensure that you are claiming a unique mark, and help you avoid infringement of other parties' rights. A registered trade-mark is a prerequisite for franchising a business.

Is registration mandatory?
No, but it is advisable.

Why hire a trade-mark agent?
Trade-mark registration can be a complex process; an experienced agent can save you time and money by avoiding pitfalls such as poorly prepared applications and incomplete research.

Who can register a trade-mark?
Companies, individuals, partnerships, trade unions or lawful associations, provided they meet the requirements of the Trade-marks Act.

How long is registration effective?
A registration is valid for 15 years and is renewable every 15 years thereafter upon payment of a fee.

How do I register a trade-mark?
You must file an application with the Trade-marks Office in Gatineau, Quebec. The application undergoes stringent examination to ensure it meets the requirements of the Trade-marks Act.

Does registration in Canada protect my rights in other countries?
No. If your products are sold in other countries, you should consider applying for foreign registration. Contact a trade-mark agent or the embassy of the country in question to find out about procedures.

What is the difference between a trade-mark and a trade name?
A trade name is the name under which you conduct your business. It can be registered as a trade-mark, but only if it is used as such, that is, used to identify wares or services.

May I register my own name as a trade-mark?
Normally, you may not register a proper name--neither yours, nor anyone else's--as a trade-mark. An exception may be made if you can demonstrate that the name has become identified in the public mind with certain wares or services.

What other kinds of marks may not be registered?
In general, the following marks may not be registered: words that are clearly descriptive (e.g. "delicious" ice cream), terms that are misleading, words that designate a place of origin (e.g. "Atlantic" cod), terms or symbols that are too similar to an existing trade-mark, and terms and symbols that are expressly prohibited under the Trade-marks Act. These latter include symbols (coats of arms, badges, crests, etc.) of national and international organizations and terms that are considered immoral or offensive. Other types of marks that may not be registered are plant variety denominations and protected geographical indications for wines and spirits.

What are the steps of trade-mark registration?
Trade-mark registration usually involves: a preliminary search (done by you or your agent) of existing trade-marks; an application; an examination of your application by the Trade-marks Office; publishing of the application in the Trade-marks Journal; time for opposition (challenges) to the application; and allowance and registration (if there is no opposition).

Why is the preliminary search important?
It helps you determine whether your application has a chance for success. It helps you avoid infringing on other people's trade-marks.

Will the Trade-marks Office tell me during my preliminary search if my trade-mark can be registered?
No, the Office cannot provide a judgment at this stage. This can only happen during the examination process. Officials will give you general information about the rules and regulations.

What do I need to include in my application?
the appropriate, completed application form; the application fee; and a drawing of the trade-mark if application is made for a word or words in special form or a design.

May I allow other parties to use my registered trade-mark?
Yes. You may sell, bequeath or otherwise transfer your rights to a trade-mark through a process called assignment. You may also license rights to your trade-mark.

Will the Trade-marks Office ensure that my trade-mark is not infringed?
The Trade-marks Office does not act as an enforcement agency. You are responsible for monitoring the marketplace for cases of infringement and taking legal action, if necessary.

Should I incorporate my company?
The answer to this question depends on your company's situation. Corporations Canada publishes the Small Business Guide to Federal Incorporation which can help you decide if you should incorporate federally. You may also choose to incorporate at the provincial level. Please consult the appropriate provincial government's Web site for further details on provincial incorporation.

What is a trade-mark?

A trade-mark is a word, a symbol, a design (or a combination of these features), used to distinguish the wares or services of one person or organization from those of others in the marketplace. Trade-marks come to represent not only actual wares and services, but the reputation of the producer. As such, they are considered valuable intellectual property. A registered trade-mark can be protected through legal proceedings from misuse and imitation.

There are three basic categories of trade-marks:

•  Ordinary marks are words or symbols (or a combination of these features), that distinguish the wares or services of a specific firm or individual. Suppose you opened a courier business which you called "Giddy-up." You could register the words as a trade-mark (assuming all legal requirements were met) for the service you offer.

•  Certification marks identify wares or services which meet a defined standard. They are owned by one person but licensed to others to identify wares or services which meet a defined standard. Examples are: the Woolmark design owned by Woolmark Americas, Ltd., for use on clothing and other wares and the logo of the Association of Professional Engineers.

•  Distinguishing guise identifies the shaping of wares or their containers, or is a mode of wrapping or packaging wares. If you manufactured candy moulded to look like butterflies, you might want to register the butterfly shape as a trade-mark under "distinguishing guise."

Other forms of intellectual property

People occasionally confuse trade-marks with copyright, industrial designs, patents and integrated circuit topographies. These are rights granted for intellectual creativity and are also forms of intellectual property. However:

•  patents cover new inventions (process, machine, manufacture, composition of matter), or any new and useful improvement of an existing invention;

•  copyrights provide protection for literary, artistic, dramatic or musical works (including computer progams), and three other subject-matter known as: performance, sound recording and communication signal;

•  industrial designs are the visual features of shape, configuration, pattern or ornament (or any combination of these features), applied to a finished article of manufacture;

•  integrated circuit topographies refer to the three-dimensional configuration of the electronic circuits embodied in integrated circuit products or layout designs.

Trade name vs. trade-mark

A trade name is the name under which you conduct your business, whether it be your own name, or the name of a corporation or a partnership or a name adopted for a segment of that business, i.e., a division of a company. The trade name can be registered under the Trade-marks Act only if it is also used as a trade-mark, that is, used to identify wares or services. For instance, let's say you own an ice cream business and your company is called A.B.C. Ltd.:

Example 1: People know your ice cream under the name A.B.C., because you use it as a trade-mark on or in association with your ice cream. You can, therefore, register A.B.C. as a trade-mark.

Example 2: People know your ice cream under the word you have promoted-for example, "Northpole." Even though the official name of your company is A.B.C. Ltd., no one associates it with your wares. Therefore, A.B.C. cannot be considered a trade-mark unless you begin to use it as one.

In certain circumstances, a trade-mark registration may be declared invalid because of the prior use in Canada of a trade name which is similar to the registered mark. Ideally, you should conduct a search of existing trade names before filing a trade-mark application. To do this, you can consult a variety of sources, including the NUANS (Newly Updated Automatic Name Search) database. A search of trade names or company names appearing in telephone directories from cities across Canada is also appropriate. To ensure a thorough search, it is best to hire a trade-mark agent to do the job.

Registered trade-mark vs. unregistered trade-mark

A registered trade-mark is one that is entered on the Trade-marks Register. You are not required to register your trade-mark-using a mark for a certain length of time can establish your ownership through Common Law-but it is highly recommended.

You must, however, apply for registration of a mark for precious metals. Your filing receipt is necessary if your goods must pass through customs.

Registration of your trade-mark gives you the exclusive right to use the mark across Canada for 15 years, renewable every 15 years thereafter. If you wish to apply for a trade-mark in other countries, you must apply to the country in which you seek registration.

Registration is prima facie evidence of your ownership. In a dispute, the registered owner does not have to prove ownership; the onus is on the challenger. Use of an unregistered trade-mark can lead to a lengthy, expensive legal dispute over who has the right to use it.

Keep in mind also that a registered trade-mark is a valuable asset for business expansion through licensing franchises. Note as well that if you fail to use the mark for an extended period, your registration may be cancelled.

Consider this scenario: For the past five years you've been operating a highly successful ice cream emporium under the word "Northpole" in your home town in Nova Scotia. You've never heard of another Northpole and you have never bothered with trade-mark registration. Meanwhile, an Ontario firm has registered the trade-mark "Northpole" to identify its growing chain of spaghetti diners and home brand tomato sauce. While conducting research for a Maritime expansion plan, the Ontario firm discovers your store and serves you with a lawsuit. Depending on the facts established with the Court, this may result in a court order preventing you from using the word "Northpole." This development couldn't come at a worse time, since you were just planning to expand your own business. The situation could have been avoided if you had solidified your clear rights to the trade-mark through registration.

Trade-mark agents

Preparing a trade-mark application and following through on it can be a complex task, particularly if a third party challenges your right to the mark. You may file on your own, but it is highly recommended that you hire a trade-mark agent to do so on your behalf.

In order to become a trade-mark agent, a Canadian resident must have worked in the field of trade-marks for at least 24 months, and have passed the qualifying examination.

A resident of Canada who is a barrister or solicitor, or a notary in the Province of Quebec, may become a trade-mark agent by passing the qualifying examination or working in the area of trade-mark law for at least 24 months.

An experienced, competent trade-mark agent who is well-briefed can save you problems caused by such obstacles as a poorly-prepared application or inadequate research. If you intend to register marks in other countries, the use of a trade-mark agent is strongly recommended.

You can find a list of trade-mark agents on CIPO's Web site. However, the Trade-marks Office cannot recommend any particular agent to you. Your local telephone directory is another source of agents' names.

Once you've appointed an agent, the Trade-marks Office will correspond with no one else about your application. You may, however, change agents at any time.

Who can register a trade-mark?

Companies, individuals, partnerships, trade unions and lawful associations may obtain registration of their marks of identification for wares or services, provided they meet the requirements of the Trade-marks Act and Regulations.

How do I register my trade-mark?

You can register a trade-mark electronically by filing an application for registration on-line with the Trade-marks Office in Gatineau, Quebec. Your application then goes through a stringent examination process to make sure that it meets all requirements of the Trade-marks Act. Keep in mind that in most instances your trade-mark must be used in Canada before it can be registered. While your application may be based on "proposed use," you must put your trade-mark into use before registration can occur.

In the following sections, we will outline the steps towards registration.

How much does it cost?

The basic federal government costs are:

•  $250 (non-refundable) if submitted on-line or in any other case $300 for each trade-mark applied for;

•  $200 for a certificate of registration, if your application is successful.

These costs do not take into account the fees of an agent, if you are using one.

Five-step examination process

When the Trade-marks Office receives your application, it does the following:

•  Searches the trade-marks records to find any other trade-mark that may come into conflict with the one you've submitted and, if one is found, informs you of it.

•  Examines the application for compliance with the requirements of the Trade-marks Act and Regulations and informs you of requirements which are not met by the application.

•  Publishes the application in the Trade-marks Journal , which is issued every Wednesday.

•  Allows time for opposition (challenges) to the application. Anyone may, upon payment of $750, file a statement of opposition with the Registrar. After considering the evidence filed by either or both parties, the Registrar decides whether to refuse your application or reject the opposition. The parties are notified of the decision and reasons why.

•  If no one files an opposition to your application, the mark is allowed. Upon payment of the $200 registration fee and the filing of a declaration of use in the case of a proposed use trade-mark application, your mark is registered.

How long does registration last?

Your registration is valid for 15 years, and you can renew the registration every 15 years thereafter upon payment of the $350 renewal fee (if submitted on-line or in any other case $400).

Note, however, that your registration may be the subject of a section 45 proceeding before the Trade-marks Office or an expungement proceeding before the Federal Court of Canada (see Expungement of a trade-mark registration in the Other Procedures section).

Foreign registration

Registering your trade-mark with the Trade-marks Office protects your rights in Canada only. If you are selling wares or services in other countries, you should consider registration in each of those countries. Contact a trade-mark agent or the embassy of the country in question for information on foreign registration.

Make sure it can be registered

Your trade-mark will qualify for registration as long as it does not conflict with Canada's Trade-marks Act , which sets out the requirements for registration. Sections 9 through 12 of the Act deal with the kinds of marks you may not register. Become familiar with these restrictions, summarized on the next page. It will help ensure a successful application.

Names and surnames

A trade-mark will not be registered if the trade-mark is primarily your full name or surname, or that of another individual (e.g. John Doe or Jane Smith, Wong, Cohen, etc.). An exception to this rule is if you can prove that your wares or services have become known under the name "Smith" or "Wong" or "Cohen," so that the word now connotes more than a person's name or surname in the public's mind. There are numerous examples of personal names that have become associated with a food, drink, or other product and are now registered trade-marks.

Another exception is if the name or surname has meaning other than just as a name or surname, i.e., it is also a recognizable word. Suppose your last name were, in fact, "Brown." You could register the word for your ice cream business as long as there were no other reasons to disqualify it.

Clearly descriptive

You may not register a word that clearly describes a feature of the wares or services. For example, "sweet" for ice cream, "juicy" for apples, and "perfectly clean" for dry cleaner services could not become registered trade-marks. All good apples could be described as "juicy" and all ice cream as "sweet"; these are inherent characteristics of the wares. If you were allowed to register these words, no other apple sellers or ice cream vendors could use them to promote their goods, which would be unfair. Again, if you can establish that "Sweet Ice Cream" has become so well known that people think of your product (and no one else's) when they hear the words, you might be able to register the trade-mark.

Deceptively misdescriptive

A further restriction is if the mark is not clearly descriptive, but clearly misleading, or in the words of the Act, "deceptively misdescriptive." For example, you could not register "sugar sweet" for candy sweetened with artificial sweetener, and "air express" for a courier service that uses ground transportation.

Place of origin

You may not register a word that clearly designates the place of origin of the wares or services, or that misleads the public into thinking that the wares come from a certain place if they do not. Thus, Paris Fashions, Atlantic Cod, Toronto Courier Service, B.C. Wines, or Danish Furniture could not be registered for those particular wares and services. Allowing you to use place names as part of your trade-mark would be to give you a monopoly on a geographical term and be unfair to others. However, you conceivably could register the words "North Pole" for bananas, since no one would expect bananas to come from there.

Disclaimers

A disclaimer is a statement indicating that the applicant does not claim exclusive rights for a certain word or words appearing in the trade-mark.

In this way, you can use clearly descriptive words in your trade-mark which are unregistrable on their own (as described above), with the understanding that you have no rights over them.

For example, the trade-mark Northpole Ice Cream (used as a trade-mark for the operation of an ice cream parlour) would require a disclaimer of the words "ICE CREAM" as these are words that are clearly descriptive of the character of the services and should therefore remain available for all to use within this field.

A disclaimer statement is entered on the application (usually the third paragraph) and in the case of the above example would read as follows: "The applicant disclaims the right to the exclusive use of the words ICE CREAM apart from the trade-mark as a whole."

Therefore, these words are still part of the trade-mark, but the applicant is not claiming exclusive rights for these specific words.

Words in other languages

Words that constitute the name of the wares or services in another language-such as "gelato," Italian for ice cream; "anorak," Inuktitut for parka; or "Wurst," German for sausage- cannot be registered.

Causing confusion

Beware of words, symbols, sounds and ideas that suggest someone else's trade-mark. If it is confusingly similar to a registered trade-mark or a pending mark, it will be refused. This prohibition makes sense when you recall that the whole point of registering a trade-mark is to protect your corporate identity from imitation or confusion with others. Trade-mark examiners take into account various factors when determining whether trade-marks are confusing. For example, they determine:

•  whether the trade-marks look or sound alike and whether they suggest similar ideas; and

•  whether they are used to market similar wares or services.

Let's go back to the example of "Northpole" Ice Cream. Suppose another company was manufacturing and selling frozen water products under the registered trade-mark "Southpole." People might easily conclude that "Northpole" and "Southpole" products are manufactured and sold by the same company. They might expect the trade-marks to be owned by the same entity. Hence your application to register "Northpole" might be turned down on the grounds of causing confusion with the registered mark "Southpole" owned by another company.

Other hypothetical examples of confusing trade-marks would be: "King Dog Food" vs. "King Cat Food" (two companies, two different product lines, but the same trade-mark and the same general area-pet food); and "Glitter" mineral water vs. "Glittering" ginger ale. However, "Glitter" for mineral water could probably co-exist as a registered trade-mark with "Glittering Dry Cleaners" as a registered trade-mark for dry cleaning services, because the wares and services in this example are quite different.

Prohibited marks

Subsection 9(1) of the Trade-marks Act lists various kinds of marks that are expressly prohibited. You may not register a trade-mark that resembles certain official symbols unless you have the consent of the authority in question. These official symbols include:

•  official government symbols, e.g., the Canadian flag;

•  coats of arms of the Royal Family;

•  badges and crests of the Armed Forces and the letters R.C.M.P.;

•  emblems and names of the Red Cross, the Red Crescent, the United Nations;

•  armorial bearings, flags and symbols of other countries; and

•  symbols of provinces, municipalities and public institutions.

These prohibitions are designed to prevent people from "cashing in" on the prestige and authority of the above-mentioned institutions and misleading the public.

Subsection 9(1) of the Trade-marks Act also prohibits subject matter that is obscene, scandalous or immoral. For example, your trade-mark may not include profane language, obscene visuals or racial slurs.

Another prohibition covers the use of portraits or signatures of living persons or persons who have died within the preceding 30 years. For example, using the photo of an existing rock group to promote your record store would be prohibited unless you had formal consent to do so.

Further prohibitions

A trade-mark will not be registered if it consists of a plant variety denomination or is a mark so nearly resembling a plant variety denomination as to be likely to be mistaken therefor, and the application covers the plant variety or another plant variety of the same species.

A trade-mark will not be registered if it is, in whole or in part, a protected geographical indication for wines or spirits, and the application covers a wine or spirit not originating in the territory indicated by the geographical indication.

The process

The preliminary search

The Trade-marks Office The Trade-marks Office maintains a public electronic inventory of all registered trade-marks and pending applications at its premises in Gatineau, Quebec. Before you apply for trade-mark registration, you or your agent should conduct a thorough search of the electronic register and the Trade-marks database to see if your trade-mark could be confused with someone else's. While not mandatory, it is a good idea for two reasons:

•  It is a form of pre-screening. It will help you determine whether your application has a chance for success, or whether it would be a waste of time and money to try to register it in its present form. For example, your search may turn up a registered trade-mark "Southpole" for frozen water products, hence you would have trouble registering "Northpole" for your ice cream. You might, at this stage, want to consider modifying your trade-mark to add or adopt more original words or artwork.

•  A search can help you avoid trade-mark infringement and potential lawsuits.

•  The search room in the Client Service Centre, in Gatineau, is open to the public, free of charge, from 8:30 a.m. to 4:30 p.m., Eastern Time, Monday through Friday, except on legal holidays, at:

You may personally visit the Trade-marks Office, or you may consult one of the companies licensed to use the electronic database, or hire a freelance trade-mark searcher or a trade-mark agent to do the research job on your behalf. Freelance searchers and trade-mark agents are listed in your local telephone directory under "Searchers of Records" and "Trade-marks".

The Trade-marks Office electronic inventory contains listings of registered and pending applications. The electronic indices cover word marks, slogans, numbers, pictures and combinations of these. As soon as your application is received, it too becomes part of the public record and is subject to inspection by the public.

To conduct a proper search, you will have to check for various possible versions of the mark. In the case of a word mark, you should look for all conceivable spellings. For example, if your trade-mark is "Northpole" you search for "North," "Nord" and "Pole".

Also in the Office records are samples of crests, badges and official symbols that fall into the category "Prohibited Marks," under subsection 9(1) of the Trade-marks Act. These samples can help you verify that your trade-mark does not fall into a prohibited category.

You should allow at least half a day to conduct your search. An information officer in the Client Service Centre will be pleased to explain how to access the electronic register and to provide you with general information about the Trade-marks Act and Regulations . You may consult the Trade-marks database now . It is important to note that, the Trade-marks Office cannot conduct the search for you, or advise you on whether your mark is registrable. Registrability of the trade-mark will be determined in the examination process of the trade-mark application.

Trade names Consider also having a search of trade names done before you go any further. Trade names are often also used as trade-marks, even if they are not registered as such. Southpole Inc. may never have filed for trade-mark registration, but if the name "Southpole" is known for frozen water products, the company could argue ownership of the word as a trade name, as well as a trade-mark. Southpole Inc. could not prevent you from filing your "Northpole" application. The Trade-marks Office would not have "Southpole" on its trade-mark records, because trade names are not registered with it.

However, Southpole Inc. could easily find out about your application, either by doing a search of the Trade-marks Office records or when your application is published in the Trade-marks Journal . It may then challenge your application during the stage called "Opposition."

As trade names may be recorded separately in each province under provincial legislation, there is no complete central inventory containing all current names, although through NUANS you can access a data-base of registered corporate names. This search is therefore quite complex and you are advised to hire a trade-mark agent to do the job for you.

Application

The principal document in the registration process is your application form. You must file a separate application for each trade-mark you wish to register, although one application may cover both wares and services or a number of wares or services.

You create the form yourself based on the sample formats supplied with this guide. There are a total of 9 different suggested formats, covering every kind of application (e.g. ordinary marks, certification marks, applications for amendment of a registration, etc.). For your convenience, the most commonly used formats, 1 and 4, annotated with instructions for filling them out, are included as Appendix B - Format of the Application .

Electronic copies of the suggested formats are available on our Web site in PDF (Portable Document Format). Suggested Forms Trade-mark applications may also be filed electronically. E-Services

•  Format 1 is for applications for ordinary marks based on use in Canada. This means you have been using the mark for a certain length of time and your claim is based on this fact.

•  Format 4 is for applications for ordinary marks based on proposed use in Canada. This means that you state your inten-tion to use the mark as described in your application. (You must demonstrate "use" before registration can occur.) You should consider waiting until the opposition period is over before commencing use of your mark.

If appropriate, you could combine the two formats. For example, if you've been offering a restaurant service under the name "Northpole" for several years and now you plan to also sell "Northpole" ice cream, your application would be based on both "use for the services" and "proposed use for the wares."

Whichever format you use, you must specify the trade-mark you are seeking to register. If your trade-mark is anything other than a word or words in upper or lower case letters then a drawing of the design is required at the time you file the application. The formal drawing should:

•  be in black and white; and

•  include a description of the colour(s) if colour is claimed by you in the trade-mark.

•  For detailed designs, a drawing as large as possible, but not exceeding 22 cm x 35 cm (8.5 inches x 14 inches), will allow for the clearest reproduction. If you wish, you may use the special chart in the Trade-marks Regulations (1996) to indicate your colours. But note that including colour gives you less flexibility, as you must then always use your trade-mark in those specified colours. If you simply present your design in black and white, you will be free to use the mark in any colour. Likewise, presenting your word mark in any style of lettering other than upper or lower case restricts you. If you wish maximum flexibility, present the word mark in upper or lower case and the design in black and white.

To sum up, a complete application includes:

•  the appropriate application form filled out by you or your agent;

•  the application fee; and

•  a formal drawing where appropriate.

Foreign applicants

If you are applying for registra-tion of a trade-mark in Canada, but reside in a country other than Canada, you must appoint a representative for service to whom the Office correspondence will be directed.

Filing date

When your application arrives at the Trade-marks Office, the Office staff check it to make sure it is complete. If anything is missing, they will contact you to ask for documents or information. Once this process is finished, the Office will acknowledge receipt of a completed application and assign a filing date, that is, the date that your application is officially filed. (Do not confuse this date with registration.) This filing date is particularly important for proposed use trade-mark applications, since it is the date the Trade-marks Act deems to be the entitlement date of your trade-mark application.

After the formal filing you may make minor modifications in your application. Major changes, however, would entail the trouble and expense of another filing. To avoid this, you or your agent must take great care in preparing your application.

Search and research

Trade-marks Office staff conduct a thorough search of the records to verify that your trade-mark cannot be mistaken for anyone else's. They also conduct research to determine whether your mark fulfils all the criteria of the Trade-marks Act , in other words, that it does not fall into any of the categories discussed in the section, "Making sure your trade-mark can be registered." The results are considered by the Trade-marks Examiner assigned to your case.

Examination

The Examiner studies the data and decides whether your application can be accepted. If there are doubts about your case, the Examiner will notify you of the objections. You then have opportunities to respond. If your answers still fail to satisfy the Examiner, you will receive a letter informing you that your application has been refused and explaining the reasons why. In the event of refusal, you have the right to appeal to the Federal Court of Canada.

Disclaimers

The Examiner may request that the applicant disclaim the right to the exclusive use, apart from the trade-mark, of a portion of the trade-mark if the appropriate disclaimer statement has not already been included in the application.

Abandonment

If you fail to prosecute your application (take all the steps necessary to complete the process), your application may be considered abandoned. Before this happens, you will be notified and given an opportunity to remedy the situation within a specified time period. If you do not respond appropriately, your application will be considered abandoned and you will have to re-apply with the requisite fee to pursue the trade-mark.

Pre-publication search

Let's suppose your application for the trade-mark "Northpole" has been approved for advertise-ment in the Trade-marks Journal. The Examiner could find no grounds to disqualify it. Does that mean registration is completed? No. There are still hurdles to overcome. The Office does another search, called Pre-publication Verification, to ensure that in the intervening months, no one has registered or applied for registration of a trade-mark that conflicts with yours. The Office will again correspond with you if necessary and seek your comments on any such trade-mark.

Advertisement

Suppose the Pre-publication Verification has not unearthed any new objections for "Northpole." Now your application is ready for advertisement in the Trade-marks Journal . This journal, published each Wednesday, contains details about every application which has been approved for advertisement. When an application is advertised, it allows members of the public an opportunity to raise objections to pending applications prior to registration. It is another means of weeding out trade-marks that conflict with those of other owners. The Journal entry for "Northpole" is a summary of the information on the trade-mark and includes your name, address, file number, filing date, the trade-mark (the word mark, symbols, etc.), whether it is based on "use" or "proposed use," which goods and services it is used for and any other claims (colour claims, disclaimers, etc.).

Opposition

Any person with valid grounds for doing so may oppose a trade-mark application advertised in the Trade-marks Journal . An opposition must be made within two months of the publication date by either filing a statement of opposition together with a fee of $250 (effective January 1, 2004 - $750) , or by requesting an extension of time to oppose, with a fee of $50 (effective January 1, 2004 - $125) . The Trade-marks Office will dismiss an opposition it considers to be frivolous.

If your application is opposed and you don't already have an agent, you are urged to hire one at this point. The same holds true if you wish to oppose someone else's application. Opposition is a complex adversarial process, much like a court proceeding, during which both parties may file evidence and counter-arguments, cross-examine the evidence of the other party and make representations at an oral hearing. The whole procedure can take as long as two to four years, sometimes longer. After a final decision is rendered, it may be appealed to the Federal Court of Canada. Because opposition proceedings can absorb so much time and money, you are advised to choose your trade-mark agent carefully. Seek someone who has a proven expertise in the field.

Allowance and registration

If there is no opposition, or if an opposition has been decided in your favour, your application will be allowed. The Trade-marks Office will not consider any further challenges. You will receive a Notice of Allowance and be asked to pay the $200 registration fee. If your application has been based on "proposed use," you will be asked for a declaration stating you have commenced use of the trade-mark. The final step, after you have fulfilled these require-ments, is for the Office to issue a Certificate of Registration and enter the registration on its records.

Expungement of a trade-mark registration

The registration of a trade-mark provides the registered owner with a very valuable right, namely, the exclusive right to the use throughout Canada of the trade-mark in respect of the registered wares and/or services. However, in order to keep such a right, the registered owner must fulfill some responsibilities.

One responsibility is that the registered owner must pay a renewal fee every 15 years. Failure to pay such a fee on time will result in the expungement of the trade-mark registration.

Another responsibility of the owner is to use the trade-mark in Canada. If the trade-mark is not in use, then the registration is liable to be expunged either by the Registrar or by the Federal Court. Summary expungement proceedings may be instituted by the Registrar either of his own volition at any time during the life of the registration, or at the request of a third party upon payment of the prescribed fee, after three years from the date of the registration (see section 45 of the Trade-marks Act ). The procedure before the Registrar begins when the Registrar issues a notice to the registered owner asking him to furnish evidence showing use of the trade-mark in Canada or special circumstances excusing non-use. The registered owner must furnish evidence, since failure to reply to the Registrar's notice will result in the expungement of the trade-mark registration.

IMPORTANT - The notice will be issued to the registered owner and his representative for service at the addresses shown on the registration page. Please note that if you have failed to notify the Registrar of a change of address, the Registrar is not responsible for any correspondence not received by the registrant or its representative for service or its agent.

Once the Registrar has received the evidence, the registered owner and the requesting party have an opportunity to submit written arguments and to make representations at an oral hearing. The whole procedure can take as long as one and a half to two years. After a final decision is rendered to either expunge, amend or maintain the registration, it may be appealed to the Federal Court of Canada.

In view of the complicated nature of section 45 proceedings, the parties are advised to use the services of a registered trade-mark agent.

Assignment

A trade-mark is a form of property. You can sell, bequeath or otherwise transfer your rights to it to another party through a transaction called an "assignment." You should formally notify the Trade-marks Office of such changes in ownership so that the Office can amend its records accordingly. This is done to avoid ownership disputes.

There are no prescribed forms for notifying the Trade-marks Office of an assignment, but you must send evidence of the change, together with the prescribed fee.

Other transactions can affect the ownership of a trade-mark, for example a change of name, a merger, etc.

Marking requirements

Canada's Trade-marks Act does not contain any marking requirements. However, trade-mark owners often indicate their registration through certain symbols, namely, R in a circle (registered), TM (trade-mark), SM (service mark), MD (marque déposée) or MC (marque de commerce). Although the Act does not require the use of these symbols, it is advisable to use them. The symbols TM, SM or MC may be used regardless of whether the trade-mark is registered. The R in a circle, or MD, on the other hand, should be used only if the mark is registered.

Canada's Precious Metals Marking Act states that you must file a trade-mark application for the trade-mark used on the wares, if you wish to stamp a quality mark (e.g. 10K gold) on your product. The quality mark itself is not mandatory.

Policing your trade-mark

One of the functions of the Trade-marks Office is to prevent anyone else from registering a mark that is the same as or confusingly similar to your mark. It does not, however, keep an eye out for cases of infringement. It is your responsibility entirely to monitor the marketplace and, if you find someone using your registered trade-mark or a mark or a trade name that is confusing with your mark, to take legal action. Someone who infringes on trade-mark rights may be accountable to you by way of an injunction, i.e., an order to cease the infringing activity and/or damages.

Preventing imitation by competitors is not the only reason to police your mark. If your business is a smash success, your mark may be in danger of becoming a generic term. Believe it or not, too much familiarity can be a bad thing.

If consumers start saying "Northpole" when they mean any ice cream, your trade-mark may no longer be distinguishable from others. Such was the fate of trade-marks such as "Zipper," "Escalator," "Cellophane," and "Dry Ice." Who remembers that the correct terms are "slide fastener" and "moving staircase"? This is why some companies are very vigilant about policing their marks, and preventing improper use of their trade-marks in any kind of communication.

What makes a name

Stand out in the crowd

Success in the business world depends largely on the message you convey and the image you project, especially in today's competitive global marketplace. Even if you offer an excellent product or service, if people can't pick you out easily in the crowd, they'll probably overlook your business in favour of one with a greater presence. Your trade-mark distinguishes your wares and services from those of your competitors, and helps to establish your identity in the marketplace.

It is a wise business decision to obtain legal proof of ownership of your trade-mark. Ideally, to do this, you should apply to register your trade-mark with the Canadian Intellectual Property Office (CIPO).

Your trade-mark can be a valuable business asset

Trade-marks have come to represent not only actual wares and services, but also the reputation of the business. Some companies spend millions of dollars nurturing their corporate identities.

Did you know that:

•  companies like Michelin, Levi Strauss and Intel consider their trade-marks their most valuable assets? 1

•  the President of Coca-Cola stated that the corporation's buildings, machinery, equipment, vehicles and physical property could all be destroyed, but that the business would have no trouble getting back on its feet, provided the trade-mark survived? 2

According to the International Trademark Association, the average person sees or hears more than 1,500 trade-marks every day.

Check it out!

Every time you include your trade-mark on posters, boxes, packaging or in promotions, you are investing in it. Whether you are just starting out in business or are already well established, it pays to know about trade-marks. Registering your trade-mark is part of working strategically in today's fast-paced world.

The world's 10 most valuable brands

Data: Business Week/Interbrand, Best Global Brands Study 2005 3

KLEENEX, HEINZ, BELL CANADA AND BOMBARDIER These are recognized trade-marks that you would never think of using for your products or services because you would be infringing on them. There are, however, many other registered trade-marks you probably aren't aware of. In 2004-2005, CIPO registered approximately 29 000 trade-marks.

The first step is to search the Canadian Trade-marks Database , available free of charge, on CIPO's website to:

•  find out if you are unknowingly using someone else's trade-mark; and

•  learn about your competitors and the wares and services they offer.

Company/business names and my trade-mark -- what's the difference?

A company name , provincial corporate name or federal corporate name is the legal name of the company/corporation.

A business or trade name is the name under which the business operates and carries on business. A business may use its company/corporate name or a portion thereof as its business name. Alternately, a company/corporation may decide to use a separate business name.

A trade-mark is a word, symbol or design, or combination of these, used to distinguish the wares or services of one person or organization from those of others in the marketplace. Only registration of a trade-mark gives its owner exclusive rights of use throughout Canada under the Trade-marks Act -- it is a legal title to protect your intellectual property.

For example:

You own an ice cream business and your company is called ABC Ltd.:

Example 1: People know your ice cream under the name ABC Ltd., because you use it as a trade-mark on or in association with your ice cream. You can, therefore, apply to register ABC Ltd. as a trade-mark.

Example 2: People know your ice cream under the word you have promoted, for example, "Northpole." Even though the official name of your company is ABC Ltd., no one associates this name with your ice cream. Therefore, ABC Ltd. cannot be considered a trade-mark unless you begin to use it as one. You may, however, apply to register "Northpole" as a trade-mark.

Protect your corporate identity against fraud!

Others may be tempted to copy or imitate the marks of successful competitors. Outsmart them and protect yourself: register your trade-mark! A registered mark can be a reassuring title of ownership in the event of a legal dispute. Even if your products or services are not yet on the market, you may file now based on an intention to use.

Registering a trade-mark pays for itself!

Franchisees may pay large sums of money for the rights to use a name, a concept, or recipes -- commonly referred to as "know how." Companies may buy other companies for their know-how, reputation, and name. "Big-name brands are in demand, and companies are willing to pay huge amounts for the instant recognition and market access they afford. [...] As the costs go up, so does the importance of protecting brand identity." 4   Intellectual property can be a highly-valued asset for sale or purchase. In order for you to profit by selling your intellectual property, we recommend that you register it to prove that you are the owner. CIPO charges a modest fee for registering a trade-mark. This gives you exclusive rights to use the mark across Canada for 15 years and can be renewed every 15 years thereafter upon payment of a renewal fee.

Search the Canadian Trade-marks Database , available free of charge to:

•  ensure you do not use someone else's trade-mark;

•  learn more about your competitors and gain valuable corporate intelligence;

•  follow trends in the industry;

•  manage your intellectual property assets; and

•  so much more...

Familiarize yourself with the content of the database or search more efficiently by consulting the Trade-marks Database Tutorial .

Avoid hassles...

If someone registers a trade-mark that is the same as the unregistered one you are using, you could end up in court wasting time, energy and money on legal disputes instead of doing business.

Thinking of exporting?

If you plan to export your wares or services one day, make sure that the mark you plan to use is not already registered in the countries in which you plan to do business. In order to use this same mark in all markets, you must obtain protection in each of these countries.

Need more details? Visit our website or contact us. You may also wish to discuss with your own legal and business advisors as to the advantages of registering a trade-mark.

Visit our website to:

•  find out how to register a mark;

•  consult A Guide to Trade-marks and other publications;

•  conduct a preliminary search using the Canadian Trade-marks Database;

•  complete and submit your application for registration online;

•  review the fee schedules;

•  become informed on other interesting intellectual property matters; and

1. discover corporate intelligence.