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Why Register Your Brand Name?

A brand owner must understand how the Canadian trademark system works so that it

can be used to the maximum extent possible to protect the brand name and related

slogans, the product and in some cases, product packaging. The potential benefits of the

Trademarks Act needs to be carefully considered and implemented in a proactive

fashion. Common law trademark rights may be helpful on a case-by-case basis.


The protection of trademarks is territorial when a brand name is used in other

countries' separate coordinated protection measures must be implemented in each

country.


The Benefits of Owning a Trademark Registration

The Act facilitates the protection of trademarks by providing for public notice of rights

and granting exclusive rights to owners. There are a number of benefits associated with

obtaining a registration which includes:


(a) A trademark registration is evidence of the exclusive rights granted under the

Act and of the validity of the registered mark.


(b) The registration of a trademark confers exclusive rights to the use of the

trademark throughout Canada, even though the owner may only be using the mark

in a specific area of the country. Such rights may not be available to the owner of a

common law trademark.


(c) A registration provides a barrier to registration by others of confusing

trademarks and is referenced on a searchable register.


(d) As an application may be filed on the basis of the proposed use, the system in

the effect allows a brand owner to reserve rights in a trademark which has not been

used.


(e) A registration carries the right to apply for a corresponding registration in other

countries that adhere to the Convention of the Union of Paris. The Convention

provides for a priority system implemented by national legislation, under which an

applicant can rely on its earliest filing date in one country as its filing date in

another so long as the application is filed within six months of the applicant's initial

filing.


(f) A trademark owner to may file an application under the Madrid Protocol to

obtain protection in Canada and in other countries designated by the applicant,

that adhere to the Protocol.


(f) After five years, a Canadian registration becomes incontestable against attack

on the grounds of previous use or making known unless it is established that the

person who adopted the mark did so with knowledge of that previous use or

making known.


(g) The Act facilitates the transfer and licensing of trademarks.


(h) Registration makes available two statutory causes of action which are not

available to common law trademark owners: that is, the right to bring proceedings

for trademark infringement and depreciation of the value of the goodwill

attached to a registered trademark.


(i) Obtaining a registration will assist the owner in using the Trademarks

Opposition Board as a forum for challenging trademark applications of others.


(j) The owner of a registered trademark may bring proceedings in the Federal

Court of Canada, which has jurisdiction to grant injunctions with nationwide effect.


(l) Frequently, ownership of a registered trademark is required to take advantage of

take down procedures on the Internet and helpful in domain name dispute

procedures.


If you have questions, please contact me at mckeown@gsnh.com.


John McKeown

Goldman Sloan Nash & Haber LLP

480 University Avenue, Suite 1600

Toronto, Ontario M5G 1V2

Direct Line: (416) 597-3371

Fax: (416) 597-3370

Email: mckeown@gsnh.com


These comments are general in nature and not intended to provide legal advice as

individual situations will differ and should be discussed with a lawyer.

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