By: Brittany DiTrani
Distinctive names, phrases, or symbols can help you to market your business by separating you from competitors, building your brand identity and reputation, and ensuring that your business is the first in consumers’ minds when they are looking for the type of product or service you offer.
If you are a small business owner or are starting a new business, you may want to be thinking about the legal protection and the competitive advantage that trademarking can provide…
What exactly is a trademark?
Trademarks are different from patents and copyrights, as they help you to protect things that identify and distinguish your brand. You can trademark things like your brand name, trade name/company name, product or service name, product packaging, domain name, logo, slogan, or a combination of these things.[1] It is important to remember that registering your business name when you incorporate does not mean you automatically have trademark rights to that name.
| Patents are for… | Copyrights are for… | Trademarks are for… |
| Your Innovation “new and useful inventions (product, composition, machine, process) or any new and useful improvement to an existing invention.”[2] | Your Creation “literary, artistic, dramatic or musical works (including computer programs) and other subject-matter known as performer’s performances, [and] sound recordings.”[3] | Your Brand “a combination of letters, words, sounds or designs that distinguishes one company’s goods or services from those of others in the marketplace.”[4] |
Pizza Pizza’s telephone number, 967-1111, is an interesting example of a trademark registered in Canada.[5] It was successfully registered as a trademark in 1994[6] after an appeal to the Federal Court of Canada in 1989.[7] This phone number, and the jingle associated with it, has helped Pizza Pizza to make themselves visible and attractive to customers by making it easier for consumers to access their products and services.
Other Canadian trademarks can be found by doing a trademark search in the Canadian Intellectual Property Office’s (CIPO) Canadian Trademarks Database. This database contains more than 1.4 million Canadian trademarks, including ones that were cancelled, expunged, abandoned or refused.
What rights does a registered trademark give me?
A trademark gives you the exclusive right to use the “mark” (the thing you have trademarked) across Canada for the purpose of selling your product or service. This means that you have the ability to sue a competitor if they attempt to use an exact imitation or something similar to your trademark.[8] You can also sue for depreciation of goodwill, which is where someone else uses your trademark in a way that damages your brand’s image.[9] Trademark rights last for 10 years, after which you may pay to have it renewed.[10]
Benefits of trademarks for your small business
Brand reputation
Strength in your brand reputation is especially important as you start to grow your business. Recognizable trademarks can instill an immediate sense of credibility and trust in your business for consumers.[11] They help to build your business’ reputation by allowing consumers to quickly associate positive experiences with and reviews of your products and services with your brand. An effective trademark can influence consumers’ buying decisions, allowing your business to grow.[12]
Clarity for consumers
Without a registered trademark, it is difficult to protect your brand from the use of identical or similar marks by a competitor.[13] This causes confusion in the minds of consumers and can potentially hurt your brand’s reputation if this competitor that you are being confused with does not protect their own. [14] Ensuring that your brand remains distinct and unique from other businesses allows consumers to more easily recall your business when looking for the product or service you offer.
Avoiding trademark infringement
On the other hand, registering a trademark early will help you to ensure that you are not building your brand on a trademark that is already registered by someone else. Because you are not able to register a trademark that is the same as or confusingly similar to another’s trademark, you can find out at this stage whether the mark you believe is unique is registered or pending registration by a different company.[15] Failing to do this could cause you to waste a great deal of time and effort building your brand, advertising, and soliciting customers on the basis of a business name that you now have to change.
Attracting investors
Having trademarks can ensure investor confidence in your business.[16] If you hope to finance your business through securities, venture capitalists and other investors will care about whether your business owns and has protected the intellectual property that is vital to its operations. They will also care about whether you have ensured that you are not infringing on another business’ trademarks. Not ensuring this can make your business an unattractive investment opportunity because of the potential for costly and time-consuming lawsuits against you by these other businesses.[17]
Control of consumer perception
A registered trademark can give you legal remedies against someone who is using your trademark in a way that could damage goodwill for your business. This allows you to have more control over how your brand is perceived in the market to ensure a positive image.[18]
Registering your trademark
Before registering a trademark, it is important to ask yourself questions about your brand’s aesthetic, message, and target market. You should also ensure that what you are trying to trademark is simple, recognizable, memorable, distinctive, and does not limit you from entering other jurisdictions or markets as your small business expands.[19]
See CIPO’s Trademark guide for useful information on filing a trademark application.
Interesting fact: In June 2019 CIPO began accepting applications for trademarks on things like scents, holograms, moving images, tastes and textures.[20]
The following are some things to keep in mind if you are deciding to register:
- Cost of applying: The cost of filing a trademark application is non-refundable, so you should be sure that there are no existing trademarks that are similar to what you hope to trademark that would prevent your application from succeeding.[21] Looking at the Canadian Trademarks Database first can give you an idea of whether there are similar trademarks to what you are hoping to trademark and can help you to understand how Canada’s trademark office, CIPO, makes its decisions.
- Length of application process: The process of applying for a trademark can take a lot of time, typically 1-2 years.[22]
- Use it or lose it: Under trademark law, owners of registered trademarks have the responsibility to use them in regard to the goods or services that are identified in the trademark registration. If you do not use it, you may lose this trademark and the rights associated with it.[23]
- Infringing on others: You may not be able to register your trademark if someone has registered or is using a trademark that is the same as or confusingly similar to what you are seeking to trademark (in association with the same or similar goods or services to yours).[24]
Trademarks and access to justice
The internet and social media give entrepreneurs the unprecedented opportunity to establish themselves in the minds of consumers and compete with larger companies.[25] Trademark protection enhances this by allowing you to establish a unique brand with legal rights attached to protect its image and advance in the market.
Read more of our blog posts to find out:
- Why you should register your trademark
- Why small and medium-sized enterprises should care and what might prevent them from registering their rights
- Three mistakes tech start-ups should take care to avoid regarding intellectual property
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.
[1] https://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr03584.html; https://www.bereskinparr.com/files/file/docs/strategicusetmdesignprotectiontradedress.pdf; https://smallbusinessbc.ca/article/trademarks-what-they-are-and-where-they-fit-your-small-business-brand/
[2] https://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/h_wr02360.html?Open&wt_src=cipo-tm-main&wt_cxt=learn#understanding
[3] Ibid.
[4] https://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr03718.html
[5] http://www.ic.gc.ca/app/opic-cipo/trdmrks/srch/viewTrademark.html?id=0458946&lang=eng
[6] Ibid.
[7]Pizza Pizza Ltd. v. Canada (Registrar of Trade Marks) 1989 CarswellNat 523, 1989 CarswellNat 643, [1989] 3 F.C. 379, [1989] F.C.J. No. 518, 101 N.R. 378, 16 A.C.W.S. (3d) 24, 24 C.I.P.R. 152, 26 C.P.R. (3d) 355
[8] https://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr04708.html
[9] https://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr04708.html; https://www.heerlaw.com/common-law-trademark-rights-canada
[10] https://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/h_wr02360.html?Open&wt_src=cipo-tm-main&wt_cxt=learn#understanding
[11] https://smallbusinessbc.ca/article/trademarks-what-they-are-and-where-they-fit-your-small-business-brand/
[12] https://www.forbes.com/sites/allbusiness/2020/09/23/trademarks-are-valuable-for-your-small-business/?sh=3faaf93970f8
[13] Ibid.
[14] https://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr03584.html
[15] https://www.forbes.com/sites/allbusiness/2020/09/23/trademarks-are-valuable-for-your-small-business/?sh=3faaf93970f8
[16] https://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr04708.html
[17] https://mcmillan.ca/insights/tips-for-startups-intellectual-property-and-its-value-to-your-company/
[18] https://www.heerlaw.com/common-law-trademark-rights-canada
[19] https://gowlingwlg.com/en/insights-resources/articles/2019/trademark-basics-for-start-ups/#:~:text=A%20strong%20trademark%20is%3A,lines%20of%20products%20or%20services
[20] https://www.linkedin.com/pulse/scent-crayon-unique-complications-other-trademarks-canada-o-grady/?articleId=6660994677262692352
[21] https://www.thebalancesmb.com/trademark-registration-in-canada-2948673
[22] https://www.mondaq.com/canada/trademark/805226/trademark-basics-for-start-ups
[23] https://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr04708.html
[24] https://www.mondaq.com/canada/trademark/805226/trademark-basics-for-start-ups
[25] Rita Heimes, “Trademarks, Identity, and Justice” (2011) 11 J. Marshall Rev. Intell. Prop. L. 133 at 132.