In this guide, we explain what trademarks are, how they compare to business names, and the scenarios where you need to trademark.
Your brand is your trademark
Businesses looking to find their footing amid competitors and big names work hard to make a lasting impression on their target audience. Apart from perfecting their product or service, businesses develop a signature brand, using colours, slogans, names, and other unique identifiers to differentiate them from others in the marketplace.
A brand image is a competitive advantage. Businesses leverage their branding to earn new business, deepen customer loyalty, raise money, attract talent, and bargain deals, among others.
Over time, a company’s brand stands not only for its products and services, but also for its reputation. That’s why it’s critical that businesses protect their brand, and any and all marks that separate their products and services from others. The best way to secure a brand is to trademark it.
What is a trademark?
When you register a trademark, you are legally ensuring that you have exclusive rights to the use of the thing you are trademarking. In other words, only you are allowed to use the word, phrase, design or business name that you trademark.
Almost anything that identifies your business from others can be trademarked, but it has to be specific to your brand. Trademark applications can be denied for a variety of reasons, like if the mark or phrase is too similar to another company that has trademarked or is in the process of trademarking in the same class of goods and services. A successful trademark registration will only apply to the class you identify on your application; with each additional class you choose to register in costing an added fee. This means that multiple people or corporations can hold the same trademark in different classes of goods and services, so make sure you take the time to think through and consult a professional on which classes you should include in your trademark registration application. Unlike a patent, which is designed to protect inventions and industrial and aesthetic designs, and copyright, which covers works of art, music and literature, trademark registrations function as a company’s brand identity and differentiate you within the market.
While you can trademark a single word from the dictionary, you can only do so if the word does not describe (or misdescribe) the goods or services they are related to. This ensures that businesses are not able to co-opt a commonly used industry term, preventing others in the same industry from describing their product without violating a trademark.
Benefits of registering your brand as a trademark
A registered trademark enjoys the legal protection of the Trade-marks Act and gives you the exclusive right to use your branding to sell your products and services. A brand that isn’t trademarked is vulnerable to theft or imitation. A competitor can take credit for your creation, confuse your customers, and take you to court over the rights to your branding and the products or services associated with it. A registered trademark has these guarantees:
- Proof of ownership: A certificate of registration is evidence that you own the trademark. It’s like a legal title to your company’s image, similar to how a deed gives you ownership to a piece of real estate.
- Exclusive rights: With a trademark, you can use your branding to sell your products and services across Canada for a period of 10 years, and renew it indefinitely for a fee every 10 years.
- Protection against trademark imitation and misuse: A trademark stops others from creating a similar trademark that may confuse your customers.
- Flag a trademark infringement: The Trade-marks Act lets you take action against any person or entity who attempts to sell, distribute, advertise or manufacture goods or services with your trademark.
- Monetize the trademark: While your branding starts as a marketing investment, it matures into new revenue streams in the long term. You can license your trademark for various commercial opportunities to boost popularity, raise awareness and bring in the moolah.
Business name registration vs trademark registration
A legal business name is used to identify a business, not a product or a service. If the legal entity (sole proprietorship, partnership, corporation) that owns the business decides to call it by a name other than the legal business name, they have to register that trade name with the government, at the federal, provincial or territorial level. Registration of a trademark, on the other hand, refers to the branding associated with products and services.
Registration of a business name and registration of a trademark have very different triggers behind them –
- Registering a business name is a legal obligation if you choose to operate your business with a name that’s different from the name of the legal entity that owns the business.
- Registering a trademark is a strategic branding decision to prevent competitors or others from duplicating the look and feel of your products or services.
- A registered business name can be used as an unregistered trademark to brand and sell your products and services. However, you don’t receive any of the benefits of a registered trademark.
- A registered trademark alone cannot identify a business legally.
- With a registered business name, you cannot stop another entity from registering an identical name or branding as a trademark, potentially confusing your customer base.
Learn more about how to choose a business name
Submitting an application to trademark your brand
Trademarking is a long drawn out process. It takes 15 to 18 months from the date of filing for a trademark examiner to review your application, and tell you whether the trademark is registrable or not.
You file an application with the Registrar of Trademarks at the Canadian Intellectual Property Office (CIPO). As part of the application process, you complete the following or more steps:
- Attach a representation and/or description of the trademark.
- Include an explanation of the goods and services associated with the trademark.
- Submit evidence to prove the extent and time during which the trademark is used in Canada.
- Pay a government fee
Top 3 things to remember with trademarks
- Do not confuse trademarks with patents and copyright. All three are different intellectual property assets. Patents cover new inventions or improvements to an existing invention, while copyright protects literary, artistic, dramatic or musical works.
- Even after registering your trademark, if you don’t use it to promote your products and services, it may be taken off the Register of Trademarks. You also have to use it in the exact same way you describe it in your application.
- While a registered business name also known as trade name is the identity of a business, a trademark is the property of a business. When it comes to protecting your ownership of your products or services, trademarking is important. You can trademark your trade name, or the specific names by which you offer your products or services.
What you can’t register as a trademark
The Trade-marks Act doesn’t allow the following to be registered as trademarks –
- Names and surnames: Exceptions are made when you can prove the name or surname has acquired a second meaning in the public mind.
- Clearly descriptive marks: The trademark cannot describe the quality or characteristic of the goods or service. For example – “red tomatoes” for a tomato supplying business.
- Deceptively misdescriptive marks: Trademarks that mislead the public cannot be registered. For example – using the word ‘organic’ in a trademark for a product that isn’t organically grown.
- Place of origin: In the interest of fairness, businesses cannot register trademarks describing the geographical location where the goods or services come from. For example – India Cotton.
- Words in other languages: It is not permitted to trademark the name of your goods or services in a different language.
- Confusing with a registered or pending trademark: If your proposed trademark is confusingly similar to another registered or pending trademark, it will be analysed thoroughly to see if they look or sound alike or if they represent similar ideas or goods or services.
- Trademarks that are identical to, or likely to be mistaken for, prohibited marks: Official government designs, badges, emblems, symbols cannot be trademarked. Obscene and offensive material, portraits and signatures of living or diseased individuals.
How much does it cost to register a trademark in Canada?
The process sounds easy enough, but how much is a trademark application going to cost? If your trademark application is limited to one class of goods and services, all you will have to pay for your CIPO application is the $330 government filing fee. If you need your trademark registration to apply in multiple classes, you’ll need to pay $100 for each additional class of goods and services. If you do choose to consult with a qualified trademark agent before submitting your application, there will likely be additional fees associated with them. However, some trademark agents offer complimentary consultations.
While you may be tempted to cut corners and complete the trademark registration process on your own, this can sometimes prove to be overly complicated and time-consuming. An agent can do a detailed search of the Trademark Registrar to determine your trademark’s eligibility, and you may not be able to devote the necessary amount of time to that project while running your own business.
What happens next?
After you file for trademark registration in Canada, it can take anywhere from 12-14 months to receive a response, so you might want to start the process even if you haven’t officially started your business yet.
Once your application is approved, CIPO will advertise your new registered trademark in their weekly online publication, Canadian Trademarks Journal. This will inform other trademark owners of your brand’s pending trademark, after which they will have two months to oppose your application if they feel it conflicts with a trademark they have already registered. If there are no oppositions, your trademark will proceed to registration.
The entire process, from application submission to official registration, can take anywhere from 18 to 24 months if your trademark registration is not opposed, which can lengthen the process by an indeterminate amount of time.
This article offers general information only, is current as of the date of publication, and is not intended as legal, financial or other professional advice. A professional advisor should be consulted regarding your specific situation. While the information presented is believed to be factual and current, its accuracy is not guaranteed and it should not be regarded as a complete analysis of the subjects discussed. All expressions of opinion reflect the judgment of the author(s) as of the date of publication and are subject to change. No endorsement of any third parties or their advice, opinions, information, products or services is expressly given or implied by RBC Ventures Inc. or its affiliates.