At their core, trademarks are what allow the public to differentiate your business from others in the marketplace. But how do you get one and when is it important to register one? This blog de-bunks some common misconceptions around trademarking and describes some of the factors to consider regarding registration.

What are trademarks?

Trademarks come in many shapes and forms. Most commonly they are words or images, like the word “NIKE” or the golden arches of McDonalds. However, you can also obtain non-traditional trademarks like colours, sounds, shapes or even scents.

Do I get trademark protection automatically? 

Yes – but that protection is limited. Canada is a first-to-use jurisdiction. This means that the moment you start displaying your trademark on your goods or on a banner in front of your establishment, you are developing “common law” rights in that trademark.

By being the first to use a trademark, you would have standing to legally stop others from using the same or confusingly similar mark. However “common law” rights are limited to the geographical area in which you have used the trademark, and to enforce your rights you would have to prove this use in court, along with corresponding damages.

What are the advantages to filing for a trademark?

If you are seeking to enhance your rights beyond what “common law” rights may arise, filing for a trademark with the Canadian Intellectual Property Office is a way to get nation-wide protection. Obtaining a Canadian registration provides several advantages, including:  

• Exclusive rights to use the trademark across Canada for ten years, renewable indefinitely;
• Preventing others from using or registering the same or similar trademark; 
• Increasing the value of your business;
• Legally evidencing ownership in your brand; and
• Providing a launching point for obtaining registration in other countries.

When does it make sense to file for a trademark?

The easy answer to this question is “as early as possible.” While filing can be completed in less than a week, it can take years to obtain a registration. Added delays due to COVID-19 have extended this timeline even further, meaning it can take businesses a long time to determine whether or not a trademark will be accepted through to registration. This is a long time to be investing into a brand without having assurances that registration will be secured, even if you file right away.

Further, although Canada is a first-to-use jurisdiction there is a significant strategic advantage to filing early. If a competitor files the same or similar mark ahead of you, even if they started using it later than you, you would have to oppose their trademark filing at a tribunal, or even in court, to stop them from securing nation-wide rights. This fact takes many Canadian brand owners by surprise, especially if they have been cultivating a brand for years, only to have a competitor file a registration and put them into the difficult position of fighting to keep their brand or abandoning it.

That said, we recognize that businesses are often in a “triage situation” – for example, it may make more sense for a business in a high-risk industry to first limit their liability and incorporate before securing their trademark rights. These are the types of common-sense decisions that we help clients navigate every day.

If you have questions about trademarking and whether it is the right step for your business, please contact us at [email protected]. Our team is happy to help you through every step of the process.