Understanding the Trademark Process | Diamond & Diamond Real Estate Lawyers
  • Thursday, 27 December 2018

Understanding the Trademark Process

An Overview of the Trademark Process

Many business owners overlook the importance of the trademark process in terms of their business name and/or design mark. It’s important to ensure you know the basics behind the trademark process to protect your own intellectual property and to avoid infringing on the rights of others.

The trademark process allows for distinctiveness in the marketplace and will set your business apart from competitors while protecting the brand you have built up in association with your business.

Why the Trademark Process is Important

With the business marketplace rapidly expanding in the last decade, it has become increasingly important to protect your brand as exclusive to you and the goods and services you provide.

A business that has put in a lot of time and money into building their brand will benefit immensely from the use of trademarking.

The reputation of your company can become tainted by another business owner who uses a confusingly similar name or design mark for their company who conducts itself poorly within the community. You’re only eligible to protect your property, though, if you’ve taken steps to trademark it.

A trademark gives the owner access to rights that will protect against infringement and the negative impacts that can result from same.

The Trademark Application Process

The application process can be timely, and even more so if there are issues with your Application. For this reason, it is important to find someone who can assist in achieving and navigating through a successful application. The right lawyer can be a critical asset in protecting your trademarked material.

There are various steps involved when applying for a trademark, including filing, formalities, examination, advertising, allowance, and registration.

The entire trademark process can take up to, and even well over, one year.

Do I Need to Register My Trademark?

If your trademark application is approved and successful, it is at this time that you may decide to register your trademark.

A registered trademark means your approved trademark has been formally entered onto the register of trademarks, as governed by the Trade-Marks Act.

Registering a trademark is not required after a successful application process. Unregistered trademark owners are still afforded rights- however, these can be limited.

Unregistered trademarks are governed by common law, and therefore they are unable to make use of statutory remedies.

Should any legal issues arise surrounding your unregistered trademark, the burden of proof falls on the owner. This is why it’s so important to work with a trademark lawyer to begin with.

This is a much more taxing process than that under the statutory regime which makes the burden of proof the responsibility of those who oppose your trademark.

While the protections under common law remain for unregistered trademark owners, there are obvious benefits of being a registered trademark owner.

Benefits of Registering your Trademark

A registered trademark owner has greater enforcement options when compared to a nonregistered trademark owner.

Whereas a registered owner is automatically afforded certain protections if their trademark has been infringed, a nonregistered owner must prove certain criteria before they can make a claim under common law.

This results in additional time and money spent for the nonregistered owner which are not required for a registered owner under statutory law (i.e. Trade-marks Act).

A registered trademark owner is provided the exclusive right to use their trademark in connection with the goods and services associated with the trademark across Canada without any geographical restrictions.

A nonregistered trademark will be subject to geographical restrictions and the owner can only enforce their rights in an area where the trademark has built up a well-known reputation. Again, this is an additional burden that falls on a nonregistered owner that is not required for a registered owner.

A registered trademark is valid for 15 years with the ability to renew indefinitely. The owner of an unregistered trademark holds the burden of proving the length of time the trademark has existed in goodwill or reputation within the community.

The above are just some examples one should consider in relation to registration and what is in the best interests of their specific business.

Legislative Changes Upcoming in 2019

Currently, the Trademark application process requires the applicant to demonstrate the use of the trademark in relation to particular goods and services.

Amendments to the Trademarks Act that are expected to take effect in 2019 will remove the requirement of showing the use of a mark in Canada prior to obtaining registration.

This amendment will ultimately loosen the rules and may lead to applicants claiming a wide variety of uses for the trademark.

These amendments may impact the current flat fee that is being charged per application, and there have been discussions around amending the fee to reflect each of the goods and services listed within an application.

While this may be speculation at this time, many business owners will be using this information to register their trademark sooner, rather than later. Our trademark lawyers are here to answer your questions.

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