The concept of trademark is often misunderstood by business people. The legal protection afforded by the Trade-marks Act (the ” Act “) can be beneficial to an entity in both legal and reputational terms, whether it’s to protect the company’s name, the product or service it offers, or its image. This article will explain why it’s not enough to register a business name with the Registraire des entreprises du Québec (the “Registrar”). Registrar “) to protect its trademark, as well as the benefits of holding a certificate of registration with the Canadian Intellectual Property Office (” OPIC “).
Company name at Registraire
The first step in the process of setting up a new company is to find a name for it that is unique and not already in use. Indeed, the Registrar, or Industry Canada in the case of a federally chartered company, will refuse any application for incorporation and registration of a company for which the chosen name is already in use and/or reserved by another entity. However, companies may have one or more other names (or assumed names), i.e. a name other than their legal name, for conducting business in Quebec. Aliases must also be disclosed to the Registrar, but are not subject to formal verification by the Registrar.
A trademark registered with OPIC
A trademark is a sign or combination of signs used by a person or entity to distinguish its products and/or services from others available on the market[1]. Trademarks can take many forms: words, designs, tastes, textures, moving images, etc. It is also possible to register the legal name of a company, only if the legal name is used to identify the source of the product or service, subject to compliance with the other provisions of the Act.
Registration of a trademark with CIPO is not mandatory, since use of the trademark for a certain period of time may confer rights on the user under common law. In the event of a dispute, proving the use of a trademark without registration can be difficult, costly and insufficient to protect its use.
Registration of a trade-mark entitles the holder to a certificate of registration, which constitutes an exclusive right to use the trade-mark anywhere in Canada, for a renewable 10-year period. The trademark register, which is accessible to the public, lists all trademarks in force in Canada. It is also possible to register a trademark 6 months before the start of business activities, thus reserving exclusive use of the trademark. The greatest advantage of registering a trademark with CIPO is that you obtain the right to exclusive use of the trademark, and that it is easy to prove in the event of litigation. Registering the company name with the Registraire does not provide these legal protections.
Other protections offered by trademark registration are reputational. Since the trademark register is accessible to the public at all times, there is a presumption of public knowledge. This is a serious deterrent to anyone wishing to use the registered trademark. Finally, the Trademark Registry enables entrepreneurs to better prepare their business plans, since a search of the CIPO database will reveal many of their competitors, enabling them to better position themselves in their chosen industry.
In conclusion, registering the company name with the Registraire does not offer the legal and reputational protections that registering the trademark with CIPO does. Registering a trademark is a means of protecting a company’s image and the product and/or service it offers, and is an invaluable piece of intellectual property for any ambitious company.
[1] http://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/fra/h_wr02360.html
