Business people are often unfamiliar with the concept of trademarks. This legal protection provided by the Trade-marks Act (the ” Act “) can be beneficial to an entity both legally and reputationally, whether to protect the company’s name, the product and service it offers, or its image. This article will explain why it is not sufficient to register a business name with the Registraire des entreprises du Québec (the ” Registrar “) in order to protect a trade-mark, as well as the advantages of holding a certificate of registration with the Canadian Intellectual Property Office (” CIPO “).
Company name at Registraire
The first step in the process of setting up a company is to find a name that is unique to it, and that cannot already be 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. The assumed name(s) 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. However, in the event of litigation, proof of unregistered use of a trademark can be difficult, costly and insufficient to protect its use.
Registration of a trademark entitles the holder to a certificate of registration, which constitutes an exclusive right to use the trademark 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, thereby 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, making it easier to prove in the event of litigation. Registering the company name with the Registraire does not provide these legal protections.
The other protection offered by trademark registration is 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 a registered trademark. Finally, the trademark register enables an entrepreneur to better prepare his business plan, since a search in the CIPO database will enable him to see many of his competitors and thus better position himself in the chosen industry.
In conclusion, registering a company’s name with the Registraire does not offer the legal and reputational protection that trademark registration with CIPO does. Trademark registration 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 all ambitious businesses.
[1] http://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/fra/h_wr02360.html
