Breaking Down Common Trademark Misconceptions

Trademarks are everywhere. Most purchases we make, whether they are purchases of goods or of services, involve one or more trademarks. However, despite being virtually omnipresent, trademarks continue to be subject to a great number of misconceptions. It may be because, for many people, the word “trademark” brings to mind massive multinational corporations like Nike or Prada. Or, perhaps these misconceptions stem from everyday encounters with counterfeit goods passed off as goods of those same corporations. Whatever the origin of these misconceptions, setting the record straight can help more businesses make the most of trademark protection, avoid disillusionment, and steer clear of costly trademark disputes.

Misconception #1: There is no need to register a trademark.

In Canada, trademarks fall into one of two categories: registered and unregistered (or, “common law”) trademarks. It’s true, therefore, that registration is not absolutely essential to trademark ownership, adoption and enforcement. However, there are important differences between registered and unregistered trademarks and advantages of registration that should not be overlooked. These differences and advantages are the reasons so many businesses elect to register their trademarks despite the foregoing.

For one, registered trademarks are cited against pending trademark applications by the Canadian Intellectual Property Office (CIPO). If someone files an application for a mark which is confusingly similar to your own registered mark, CIPO will flag the similarity and the applicant for the mark will have to show that their mark is not confusingly similar in order to obtain registration. In this way, CIPO takes steps to protect your trademark rights without you having to do so much as lift a finger. Unregistered marks do not benefit from this same intervention. Thus, a mark confusingly similar to your own unregistered mark may be allowed. If this is the case, and the mark proceeds to registration, your recourse will be to initiate court proceedings to invalidate and expunge the trademark from the register at your own expense.

Another substantial difference relates to enforcement and the scope of protection to which a trademark is entitled. Businesses looking to enforce their unregistered trademark rights must first establish the existence of those rights, whereas a registered trademark is evidence of the exclusive right to the use of that trademark in respect of the enumerated goods and service throughout Canada. Unregistered trademark owners must therefore show that there is goodwill or reputation attached to the trademark used in association with a set of goods and services in the relevant area. Unregistered trademarks are only entitled to protection in the geographical area where that goodwill can be shown. Thus, if a business is using a substantially similar mark in British Columbia, but your business is only known to Ontario, you would likely be unable to enforce rights to the mark in British Columbia.

Misconception #2: There is no rush to register a trademark.

Trademark registration in Canada operates on a first-to-file basis. This means that the first person to file for a trademark is generally the person entitled to its registration. Thus, the sooner you file for a trademark, the closer you are to the front of the line.

Further, keep in mind that trademark registration takes time. At best, a Canadian trademark application may be allowed within 27 months of the date of filing. In most cases, however, after waiting over a year for the application to be examined, applicants are met with objections to overcome and defects to remedy in respect of the application. In some cases, more than one examiner’s report is received before a final decision is rendered as to the registrability of the mark. The sooner you file your trademark application, the sooner this relatively long process begins.

Misconception #3: If someone has registered a trademark, no one else can register and/or use the same trademark.

Identical trademarks may be registered and used by different owners. Trademark rights are circumscribed by a set of goods and services in association with which the mark is registered and/or used. Therefore, the same trademark can be used by different businesses in association with different products. Take, for example, “EXPRESS” which is a registered trademark belonging to both 3M Company (in association with dental impression material) and ACCO Brands Corporation (in association with stationery-type organizers, calendars and calendar refills). These goods being substantially different from each other is a factor permitting the coexistence of the marks. If the goods were more similar, one of the marks might not have been allowed to register over the other.

Misconception #4: A trademark is not infringed unless it is copied letter-for-letter or line-for-line.

As already alluded to, use of a trademark that, while not identical to another mark, is confusingly similar to that mark, may be problematic. That infringement is not limited to exact reproduction is made clear by section 20(1) of the Trademarks Act, which reads as follows: “[t]he right of the owner of a registered trademark to its exclusive use is deemed to be infringed by any person who is not entitled to its use under this Act and who […] sells, distributes or advertises any goods or services in association with a confusing trademark or trade name”.

Misconception #5: Trademarks are the realm of the corporate giants.

When “trademark” brings to mind the likes of Nike, Prada, Apple, and Nordstrom, it’s easy to see why small business owners may believe that trademark protection is not suited for them. The reality, however, is that every business has a day one, and taking steps to protect your trademark today can not only prepare your business for eventual success but may also help your business get there.

At Heer Law, we frequently work with new businesses, helping them develop intellectual property strategies tailored to their needs and resources. While it may seem early, remember that there is no magic moment that marks the evolution of a brand into something worth copying and therefore worth protecting.

Misconception #6: There is no reason you need to hire a trademark agent.

Although it is entirely possible for an individual to file a trademark application without the help of a trademark agent, this is generally not recommended.

First, because your application determines the scope of your exclusive right to the use of your trademark throughout Canada. A poorly drafted or incomplete application may substantially limit the scope of protection for your trademark in the event that your trademark proceeds to registration.

Second, because a large number of applications for trademarks do not proceed immediately through to approval and registration. Instead, these applications are met with examiner’s reports detailing objections to the applied-for marks or defects in the application. Successfully (and promptly) overcoming these objections and remedying these defects requires knowledge and experience acquired in the course of prosecuting countless applications and responding to countless examiner’s reports. Retaining a trademark agent helps ensure that your application is drafted appropriately and proceeds through the examination process as quickly as possible. A trademark agent may also, at your request, provide you with an opinion on the registrability of your trademark. An opinion from a patent professional can save you from investing substantial resources into an application for a trademark that is very unlikely to register.

Misconception #7: If I don’t plan to sue, I don’t need a registered mark.

Registered trademarks are valuable irrespective of your intention to enforce your rights in a formal court proceeding. A trademark registration deters would-be infringers as it represents a source of potential liability. A would-be infringer of your trademark does not know whether or how you would choose to enforce your rights. Further, many trademark disputes may be resolved without going to court at all. A cease-and-desist letter (also called a “demand letter”) citing a valid trademark registration which is alleged to have been infringed is often all that is required to put an end to infringing activity.

Misconception #8: My registered business name or corporate name is a registered trademark. No one else can use it.

Registering a business name or corporation name in no way entitles you to the use of that same name as a trademark. The permission that is granted to you to use your chosen business name is limited to the operation of a business under that name, not its use as a trademark. Use as a trademark means use to distinguish your goods and services from those of others. This might be done, for example, by including the trademark on goods or their packaging, in advertising material, or on employee uniforms.

Further, although your proposed corporate name is checked against existing corporate names and registered trademarks during the incorporation process, unregistered trademarks which do not form a part of this check may also prevent you from adopting your business name as a trademark.

Misconception #9: I do not need to police my registered trademark.

While CIPO does, as mentioned above, play a role in inhibiting the registration of marks confusingly similar to your registered trademark, that is where CIPO’s role in the ongoing protection of your trademark rights starts and ends.

First, it is possible that while you consider a particular applied-for mark to be confusingly similar to your registered mark, the trademark examiner does not. To avoid such trademark being allowed to register, you may wish to regularly review the Trademarks Journal for confusingly similar trademarks. The Trademarks Journal lists the trademarks which have been allowed and which, subject to being opposed by a third-party, will register. If you have concerns about an allowed mark, you may initiate opposition proceedings to try to keep the mark from registering. Second, CIPO does not police trademark infringement. It is your responsibility to identify instances of infringement of your trademark and enforce your rights.

Misconception #10: No one in my industry is using my mark, therefore it is available.

Since a proposed trademark may be confusingly similar to an existing trademark despite differences in the goods and services between the two marks, this is not necessarily true. For example, someone in a closely related industry may be using an identical or similar mark and a trademark examiner may cite this registration against an application for your mark. Although such objection is not fatal to your application and may occasionally be overcome, if you’re in a position to change your trademark, a confusingly similar mark in a related industry may be reason to do so.

Further, note that a trademark in Canada may be registered before it is used. Thus, a registered trademark may exist that is confusingly similar or identical to your proposed mark which has not yet been used in commerce. For this reason, an awareness of your competitors’ marks currently in use is insufficient evidence for the conclusion that your mark is available.

For greater certainty as to the availability of your mark, a trademark search and opinion provided by an experienced trademark professional is highly advantageous.

Misconception #11: A registered trademark is enforceable all over the world.

Trademark rights are territorial in nature, therefore, no, your registered Canadian trademark is not enforceable outside of Canada. For international protection, you will require multiple registrations in multiple countries. For more information on protecting your trademarks outside Canada, see our dedicated article.

Misconception #12: The symbol ™ indicates a registered trademark.

The trademark symbol ™ is not exclusive to registered trademarks. The ™ symbol may be used by anyone in association with their trademark to denote it as such and signal to others that the user is intent on protecting their rights. It is the ® symbol that is used to indicate that a trademark is registered.

Misconception #13: A trademark is a word, phrase or logo.

Actually, although these are the most popular forms a trademark may take, in Canada, a trademark may be any of:

• a word
• a personal name
• a design (logo)
• a letter
• a numeral
• a colour
• a figurative element
• a three-dimension shape
• a hologram
• a moving image
• a mode of packaging goods
• a sound
• a scent
• a taste
• a texture
• the positioning of a sign

For more information or to learn how your business can benefit from trademark protection, contact us now for a complimentary and confidential telephone appointment.