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
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
(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
(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
(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
If you have questions, please contact me at firstname.lastname@example.org.
Goldman Sloan Nash & Haber LLP
480 University Avenue, Suite 1600
Toronto, Ontario M5G 1V2
Direct Line: (416) 597-3371
Fax: (416) 597-3370
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.