By: Holly Grosdanis
In Canada, even if you don’t register your trademark, your use of a trademark will allow you to acquire certain rights to the trademark. One might ask then: “why register my trademark at all?”
Trademark registration provides owners of a mark with far more legal rights and protection. This post will explore six of the most significant benefits of trademark registration and make the case that brands and businesses should promptly register their trademarks or miss out on key benefits.
1. Prevent others from Registering and Using a Confusingly Similar Trademark
Firstly, and most importantly, registering your trademark means that the same or a confusingly similar trademark cannot be registered in Canada. [1] Registering your trademark can discourage others from attempting to use or register the same or a confusingly similar trademark. Should someone begin using the same trademark, the registered trademark owner has access to several more legal enforcement options than the owner of an unregistered trademark.
2. Nationwide Trademark Protection across Canada for 10 Years
A trademark registered in Canada is protected nationwide for ten years and can be renewed indefinitely. [2] If a trademark is unregistered, its protection is limited to geographical areas, like cities or provinces, where the mark is used and known to the public.
3. Lower Costs of Enforcement
When your trademark is registered, you can sue for infringement should someone begin using it. This course of action is far easier and less costly if you have a registered trademark for several reasons. First, when registering your trademark, you must provide the Trademarks Office with a substantial amount of information about your business, the services you provide, and the trademark itself. If a dispute arises about your trademark, there will be lower enforcement costs due to the evidence you have already provided to the Trademarks Office. [1]
Second, if your trademark is unregistered, you will have to sue the user for passing it off. To prove that someone tried to pass off their trademark as your own, you must establish goodwill and damages—a far higher legal standard to meet. [3]
4. Monitoring for Counterfeit Products at the Canadian Border
Owners of registered trademarks may benefit from new border enforcement measures that enable customs officers to detain goods they suspect infringement on registered trademark rights. [3] A registered trademark owner can record their rights with the Canadian Border Services Agency, which will inform the trademark owner if counterfeit goods bearing their registered mark are detected at the border.
5. Public Notice of Ownership in Trademarks Journal
After filing an application for registration with the Trademarks Office, your mark will be published in the Trademarks Journal before your registration is confirmed. [2] Third parties may oppose your application on several grounds during the two months following publication. A third party could oppose your registration on the basis that it is too similar to their mark, particularly given the similarity of the goods or the lines of business the mark relates to. By going through the registration process, you can ensure that your business is not using an existing trademark or one that is too similar.
6. Web Domain Name Ownership
Canadian trademark registration allows for the registration of a corresponding domain name. [2] Even if you think your brand does not require a website, registering your domain name ensures that “cyber-squatters” — people who register domain names and then charge you to buy it from them — do not get there first. [2]
Conclusion
Are you convinced that trademark registration is the best course of action for your business and brand? We hope so. To find out more about trademark registration visit the Government of Canada’s primer on trademarks or a step-by-step on how to register.
Disclaimer: The information provided in this response is for general informational purposes only and is not intended to be legal advice. The content provided does not create a legal client relationship, and nothing in this response should be considered as a substitute for professional legal advice. The information is based on general principles of law and may not reflect the most current legal developments or interpretations in your jurisdiction. Laws and regulations vary by jurisdiction, and the application and impact of laws can vary widely based on the specific facts and circumstances involved. You should consult with a qualified legal professional for advice regarding your specific situation.
Sources
[1] Christopher Heer, Bonnie Headley, Roxana Monemdjou, Annette Latoszewska, “11 Benefits of Registering Your Trademark in Canada,” Heer Law, February 25, 2022.
[2] “Welcome to the Trademarks – Learn the basics online module,” Government of Canada, December 18, 2020.
[3] Cynthia Rowden and Sharyn Costin, “The Many Benefits to Registering a Trademark,” Bereskin & Parr, November 13, 2014.