Trademarks – Learn the basics
Protect your brand. Learn why trademarks matter.

Welcome to the Trademarks – Learn the basics online module

To succeed in the business world, you need to send the right message and develop the right image.

Everything that sets your business apart produces a brand image that consumers come to know. Your brand tells them what they can expect from your goods and services and sets you apart from competitors.

Trademarks are valuable intellectual property (IP) assets that can protect your brand.

Find out what trademarks are and how to make strategic use of them.

This module is aimed at those who would like to learn about IP, specifically trademarks.

This can include:

• entrepreneurs
• innovators
• creators
• Canadian small and medium-sized businesses

In this module, you will learn:

1. what a trademark is
2. what you can and cannot register as a trademark
3. how trademarks can be a valuable business asset
4. the steps involved in filing a trademark application
5. best practices on managing your trademark portfolio

IP refers to creations of the mind, such as inventions, literary and artistic works, designs, brand names, slogans and logos used in commerce.

Developing a brand identity and image is essential in setting up your business for success.

A registered trademark can protect things like the following:

• Clever and catchy names to describe your products or services
• Distinctive visual identifiers, such as words and logos
• Promotional materials, such as slogans and jingles

Over time, your trademarks come to stand not only for the goods you make or the services you provide, but also for your reputation and brand in the marketplace.

Understanding trademarks

What is a brand?

Simply put, your brand is your image. It represents your reputation in the eyes of consumers.

It is built over time and can be a synonym of quality and reliability in the marketplace.

Take a moment to think of brands you like.

…

Why did you specifically think of these brands?

What is a trademark?

A trademark is a sign or combination of signs used or proposed to be used by a person to distinguish their goods or services from those of others.

A trademark protects your brand identity, which represents your company and your goods or your services.

Trademark, company name and domain name

Trademarks, company names and domain names are often confused:

• Trademark
  Your company name, your logo or the way you identify or refer to your goods or services
• Company name
  The name under which you conduct your business, your business name or your trade name
• Domain name
  The name of your website address on the internet

Registering your domain name or incorporating your business does not give you any trademark rights.

Example

The Tim Hortons trademark has been used in Canada in association with coffee, donuts and restaurant services since the 1960s. It has been registered (with the "s") since 1991 and is still registered today.

When you hear "Tim Hortons," you may immediately think of a particular type of coffee and an array of donuts served in a particular type of restaurant. That association is exactly what trademarks are meant to do.

The company name in this example is "Tim Hortons Inc."

The domain name is "timhortons.com."

The company uses its trademark in its domain name, but its domain name as a whole is not necessarily a trademark.

Types of trademarks

There are 2 types of trademarks: 

An ordinary mark may include words, designs, tastes, textures, moving images, modes of packaging, holograms, sounds, scents, 3-dimensional shapes, colours or a combination of these used to distinguish goods or services.

A certification mark can be licensed to many people or companies for the purpose of identifying that certain goods or services meet a defined standard.

Registering a trademark in Canada

Registering a trademark means it is entered in the Canadian Register of Trademarks.

Registering a trademark gives you the sole right to use it across Canada for 10 years.

Start the registration process by submitting a trademark application with the Canadian Intellectual Property Office (CIPO).

Why register trademarks?

A registered trademark:

• constitutes direct evidence that you own the trademark
• prevents others from registering and using a confusingly similar trademark
• gives you the ability to enforce your trademark right
• becomes more valuable if you license your trademark for others to use

Trademark symbols

There is no legal requirement to mark your trademark with any particular symbol.

However, you may come across the following symbols when searching for trademarks:

The ® symbol indicates that the trademark is registered.

The ™ symbol indicates that the trademark is unregistered or in the process of being registered.

Choosing a trademark

Choosing a trademark is not always a straightforward task.

A trademark should be unique and not easily confused with any existing trademark. In order to be registrable, it will also need to comply with the Trademarks Act, which is the federal legislation governing trademarks in Canada.

The strongest and most potentially valuable trademarks are usually the least descriptive, but most distinctive.

Consider using:

• a coined term or made-up word
• a trademark that is unrelated to the goods or services offered

Consider the translation of your mark if you are thinking of exporting your brand. Translating a trademark into other languages could result in different meanings or interpretations.

A coined term or made-up word

The following are successful Canadian companies and brands that use a coined term or made-up word for their trademark.

A trademark that is unrelated to the goods or services offered

The following are successful Canadian companies and brands that use a trademark that is unrelated to the goods or services they offer.

Choosing a trademark

Trademarks that cannot be registered include the following:

• Clearly descriptive marks
• Words that are the name of the goods or services in other languages
• Trademarks based on a place of origin
• Names and surnames
• Deceptively misdescriptive trademarks
• Trademarks that could be confused with other registered or pending trademarks

For more information and examples on what you can and cannot register as a trademark, consult the Trademarks guide.

Using your trademark

As the owner of a registered trademark in Canada, you have the responsibility to use the trademark in regard to the goods or services that are identified in the trademark registration.

If you do not use it, your trademark may be expunged from the Register of Trademarks.

Value added by trademarks

Trademarks help build your reputation and goodwill in the eyes of the public, which will make your brand attractive and maintain consumer loyalty.

A registered trademark could deter counterfeiters from copying your product or causing confusion in the marketplace with a similar trademark to yours.

Without trademark protection for your goods or services, customers may be unable to distinguish your genuine product or service from a fake.

A registered trademark can boost investor and stakeholder confidence.

You could also establish partnerships within your investors' network and other companies, which could help build your company's reputation.

Registered trademarks can also be a revenue source.

Secure licensing or franchising agreements, so that a third party can use your registered trademark in exchange for royalties or a percentage of all sales.

Successful companies in the food industry, such as McDonald's, Subway and Tim Hortons, are great examples of this business model.

Using trademarks strategically

Create brand value

Trademarks help create brand value for your business by distinguishing your goods or services from the competition's.

Build value by integrating your other IP assets with your brand.

Building the value of your brand

• Inventions (patents)
• Brands, logos, slogans (trademarks)
• Formulas, data, manufacturing process (trade secrets)
• Written works, videos, music (copyright)
• Product design (industrial design)

Sell your brand

Use your brand to grow your business.

Consider getting exclusive legal rights to your trademark with a registered trademark that will serve as evidence of ownership.

Consider commercializing your trademark, which you can do, for example, by setting up licensing agreements.

What could you gain from it?

• Reaching new markets by expanding through your licensee's marketing and distribution channels
• Increasing brand recognition by appearing on new products and in new channels
• Establishing strategic partnerships where both parties work together toward common core business goals

Brand partnering

A strategic brand partnership can also greatly increase the value of trademarks.

Consider the example of Sidney Crosby, who partnered with Reebok to create his own personal brand, "SC87," which sells hockey equipment and apparel that are "approved" by Crosby.

He also has partnerships with companies such as Gatorade and Tim Hortons. These partnerships are meant to appeal to his fans and attract consumers to the companies' products.

Export your brand

Trademark protection is territorial. Consider strategically filing for trademark rights in countries where you plan to do business.

Use online tools and databases to search for trademarks in countries where you plan to do business. Make sure no one else has the legal rights to your trademark, or to one that could be confused with yours.

Consider licensing agreements with overseas entities, as they are one of the quickest ways to expand across global markets.

International trademark filing system

The Madrid System allows you to apply in multiple countries by filing one application and paying one set of fees.

For more information on seeking trademark protection internationally, consult:

• CIPO web page on international trademarks under the Madrid Protocol
• World Intellectual Property Organization (WIPO) web page on the Madrid System

Applying for a trademark in Canada

Search trademark databases

Before you file, search for registered trademarks or pending trademark applications.

This will help you determine if your trademark could be confused with someone else's.

Start with the Canadian Trademarks Database on the CIPO website.

Check out the tutorial on how to search the database.

If you are thinking about using your trademark abroad, search international databases for registered trademarks around the world.

United States Patent and Trademark Office

WIPO Global Brand Database

Understand the application process

Make sure you understand the trademark application process at CIPO.

Check out the roadmap to learn more.

Goods or services associated with your trademark

Before filing your trademark application, you must understand how to group all of the goods or services associated with your trademark according to the classes of the Nice Classification.

The Nice Classification:

• is an international classification system used to classify goods and services for the purposes of the registration of marks
• is administered by WIPO
• consists of a list of 45 classes (34 classes of goods and 11 classes of services)
• includes class headings and explanatory notes that help applicants determine the types of goods and services included in that class

Submit your application

You can file your application and pay the fee online. You can also submit your complete application with your payment by mail, but you will need to pay an additional fee.

A complete application must include:

• the applicant's name and address
• the trademark
  • a representation or description, or both, of the trademark
  • a statement in specific and ordinary commercial terms of the goods and services associated with the trademark
• the goods or services grouped according to the Nice Classification
• the application fee
• any other requirements specific to the type of trademark

Examination of your application

After CIPO receives your application and grants it a filing date, a trademark examiner will review your application to make sure that your trademark is registrable and that it does not conflict with one already filed or registered.

If your application does not meet the requirements of the Trademarks Act and Trademarks Regulations, the examiner will explain why, and you will then have an opportunity to overcome the objection or meet the missing requirements.

Publication of your application

If your application is in order, it will be advertised in the Trade-marks Journal, which is the official publication that lists every application that has been approved for advertisement in Canada and is available on the CIPO website.

This allows others to oppose a trademark before it is registered.

Any person who has a valid ground of opposition to any trademark application for registration advertised in the journal may file a statement of opposition within two months of the advertisement date.

Registration of the trademark

If no one opposes to your application, it will proceed to registration.

CIPO will send you a certificate of registration and enter the trademark in the Register of Trademarks.

Standard fees

Certain fees may be applied during the trademark registration process.

Consult the list of fees related to trademark registration.

Managing your trademark

Renew your trademark

To maintain your trademark registration, you must pay a renewal fee every 10 years.

If you do not, your trademark will be expunged from the Register of Trademarks. You will receive a notice with information about your payment deadline.

Monitor trademark infringement

It is your responsibility to monitor the marketplace for any unauthorized use of your trademark.

Your trademark rights could be infringed by:

• an exact imitation
• falsely branded goods being imported
• another party using your trademark in a manner that depreciates the goodwill of your brand
• another party using a similar trademark to yours in the same commercial field, which could lead to confusion for consumers in the marketplace

How to detect trademark infringement

To claim infringement, you must be able to prove that you have a valid registered trademark and that another party is using the same or a similar trademark that might cause confusion.

Consider seeking the help of an IP professional, as infringement matters are quite complex.

Here are some tips to help you detect trademark infringement:

• Keep an eye out on online marketplaces and in everyday life.
• Monitor trademark applications filed at CIPO to prevent others from attempting to register trademarks that are too similar to yours.
• Set online alerts with your trademark name and look for unauthorized uses on social media and in domain names.

Monitor domain name infringement

As a best practice, you should always do your due diligence and search domain name and trademark databases during the naming process of your business.

If your domain name is available and does not infringe on anyone else's rights, you should register your domain name and apply for trademark registration at the same time to deter "cybersquatters" from registering your domain name before you and then charging you to buy it from them.

Resources

CIPO website – Trademarks

Start with the Trademarks web page on the CIPO website. It contains a wealth of resources related to trademark protection in Canada.

Consult the Trademarks guide to learn more.

CIPO website – Goods and Services Manual

Use CIPO's Goods and Services Manual to help you group all of the goods and services in your application according to the Nice Classification.

This manual provides acceptable identifications and statements of many goods and services, along with their appropriate Nice class.

Trademarks Opposition Board

The Trademarks Opposition Board handles cases where:

• there is an opposition to the registration of a trademark
• a registered trademark has been expunged (removed)

It conducts hearings and renders decisions according to the Trademarks Act and Trademarks Regulations.

Consult the Trademarks Opposition Board web page to learn more.

World Intellectual Property Organization

WIPO has a resourceful section on trademarks and provides an international angle to trademark protection.

Learn more about the Madrid System for the International Registration of Marks.

Consult the WIPO web page on trademarks to learn more.

IP professionals – Trademark agent

Many trademark owners choose to be represented by a registered trademark agent for their knowledge of the Canadian registration process.

What can a trademark agent do for you?

• Represent you before CIPO for trademark matters
• Assess your trademark for registrability
• Conduct research for you
• Assist in writing the application with appropriate technical language

CIPO provides a list of registered trademark agents who are authorized to represent trademark holders before the Office.

Note: CIPO cannot recommend any particular agent to you.

Hiring an IP professional

For more information on choosing and consulting an IP professional, as well as the related cost, consult CIPO's resource on hiring an IP professional.

Final word

Thank you for completing the Trademarks – Learn the basics online module!

Work hard to make sure that your products or services are instantly recognizable and memorable, and that they evoke positive associations. Protect your trademarks, such as words, logos, slogans and packaging, by seeking formal registration in markets where you plan to do business.

Making the best use of your registered trademark rights will give you a competitive advantage over others.

To learn more on IP rights, check out the other online modules on patents, copyright and industrial designs to see how they could also protect your innovation and support your business growth.

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