Resources‎ > ‎

Trademark Law Resources

What are trademarks?

Trademarks can be names, words, sounds or designs (i.e., logos) used to distinguish the goods or services of one person or organization from those of others. Over time, trademarks come to stand for not only the actual goods or services a person or company makes, but also the reputation of the producer. Trademarks are very valuable intellectual property.

The Canada Trade-marks Act defines a trademark in section 2 of the Act as "(a) a mark that is used by a person for the purpose of distinguishing or so as to distinguish goods or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others, (b) a certification mark, (c) a distinguishing guise, or (d) a proposed trade-mark."

What is the difference between an ordinary trademark and a certification mark?

An ordinary trademark is made up of words, sounds, designs or a combination of these used to distinguish the goods or services of one person or organization from those of others. For example, suppose you started a courier business that you chose to call Giddy-up. You could register these words as a trademark (if you met all the legal requirements) for the service that you offer. A certification mark can be licensed to many people or companies for the purpose of showing that certain goods or services meet a defined standard. For example, the Woolmark design, owned by Woolmark Americas Ltd., is used as a certification mark on clothing and other goods. Below is a representation of the Woolmark design certification mark, Canadian trademark registration number TMA138840.



The Canada Trade-marks Act defines a certification mark as "a mark that is used for the purpose of distinguishing or so as to distinguish goods or services that are of a defined standard with respect to (a) the character or quality of the goods or services,(b) the working conditions under which the goods have been produced or the services performed, (c) the class of persons by whom the goods have been produced or the services performed, or (d) the area within which the goods have been produced or the services performed, from goods or services that are not of that defined standard."

What is a distinguishing guise?

A distinguishing guise is about the shape of goods or their containers, or a way of wrapping or packaging goods that shows they have been made by a specific individual or firm. For example, if you manufactured butterfly-shaped candy you could register the butterfly shape as a distinguishing guise.

Below is the IPod distinguishing guise (Canadian trademark registration number TMA873663) owned by Apple Inc.


Below is the Tic Tac mints distinguishing guise (Canadian trademark registration number TMA230777).


The Canada Trade-marks Act defines a distinguishing guise as "(a) a shaping of goods or their containers, or (b) a mode of wrapping or packaging goods the appearance of which is used by a person for the purpose of distinguishing or so as to distinguish goods or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others."

What should I avoid when choosing a new trademark?

When choosing a new trademark for your business, it is important to avoid a trademark that is generic or descriptive. Generic or descriptive trademarks may be difficult to register and/or enforce. For example, if your business sells ice cream, you should avoid using the word "Sweet" as a trademark for your ice cream, because the word "Sweet" is descriptive. You should also avoid adopting a trademark that is primarily merely the name of a person (e.g., "John Smith") or a surname. You should also avoid adopting a trademark that is the name in English or French or any language of the goods or services in association with which the trademark is to be used. You should choose a trademark that is original and distinctive.

To avoid expensive prosecution or opposition or litigation, you should choose a trademark that is not similar to a competitor's trademark as to likely be confusing.

It is highly recommended that you retain a trademark lawyer or trademark agent to conduct a comprehensive trademark search before adopting a new trademark.

Does a registered trade name provide trademark protection?

A trade name is the name under which you conduct your business. A trade name is generally registered under a provincial statute that governs trade name use and registration. A trade name can be registered as a trademark under the federal Trade-marks Act only if it is also used as a trademark, that is, if it is used to identify the source of the goods or services.

Registering a trade name (including a business name or corporate name) under the provincial statute does not ensure the exclusive right to use that name in the marketplace. For example, if you register the trade name "XYZ shoe store" with BC Registry Services for operating a shoe store in Vancouver, BC, and you don't register "XYZ" as a trademark with the Canadian Trademarks Office, someone in Toronto, Ontario could potentially register and use the same trade name and operate a shoe store in Ontario. On the other hand, if you have a valid Canadian trademark registration for the trademark "XYZ" in association with "operating shoe store business", then you could use that trademark registration to prevent the person in Ontario from using the trade name "XYZ shoe store".

Generally speaking, if there is a conflict between a trade name registration and a trademark registration, the trademark registration "trumps" the trade name registration.

Can a trademark owner license or let others use its trademark?

Trademarks may be licensed, but improper licensing could jeopardize the trademark owner's rights in the trademark. When licensing a trademark, the trademark owner must directly or indirectly control the character and/or quality of the goods and/or services provided by the licensee. Under proper licensing, licensed use inures to the benefit of the trademark owner.

How should a trademark registration be maintained?

To maintain a trademark registration, it is very important that the trademark owner maintain proper use the trademark in Canada on a continual basis. Generally speaking, to constitute use of a trademark in association with goods, the goods must be sold in the normal course of trade in Canada and the trademark must be marked on the goods or on the packaging of the goods. To constitute use of a trademark in association with services, the trademark must be used or displayed in the performance or advertising of the services. If a registered trademark is not used for three years, the trademark is liable to be expunged from the Register of Trademarks. The trademark owner should also monitor the marketplace for infringement and prevent the trademark from losing its distinctiveness. The trademark owner should also renew the trademark registration before each renewal deadline.

How can one become a registered trademark agent in Canada?

In Canada, only registered trademark agents are able to represent applicants before the Canadian Trademarks Office. As a lawyer, I became a registered trademark agent under the old rules, that is, by actually practicing Canadian trademark law and practice for more than 24 months in an intellectual property law firm, under the supervision of other experienced Canadian trademark lawyers and agents. So I did not have to take the trademark agent exams.

Under the new (and current) rules, however, candidates, including lawyers, have to write and pass the Canadian Trademark Agent Qualifying Exams administered by the Canadian Intellectual Property Office (CIPO) in order to have their names entered on the Trademark Office's list of trademark agents. 

If you are interested in a career as a Canadian trademark agent, you can take a look at the CIPO's webpage entitled "How to Become a Registered Trademark Agent". The webpage includes several previous trademark agent exams and marking guides, so you can test your trademark knowledge.

Why you should hire a trademark professional who is both a lawyer and a trademark agent?

You need a trademark professional who is both a lawyer and a trademark agent to successfully obtain and enforce trademark rights for you in Canada. A trademark agent who is not a lawyer can only file and prosecute trademark applications, but cannot provide legal services, such as preparing trademark assignments, preparing and witnessing affidavits, initiating or responding to Cease-and-Desist letters related to trademark enforcement, and providing trademark litigation advice. As a lawyer qualified with the Law Society of BC and also a trademark agent, I can provide the full spectrum of trademark services to my clients.