Whether you are a new business just starting out, or an existing business looking to expand, developing and promoting your brand is a key component of a successful marketing plan. Registering your trade-marks in the initial stages of your marketing plan is a cost-effective way of developing long-term brand protection.
It is a common misconception that registering your business name, or incorporating your business (either provincially or federally) grants you all-encompassing rights in that name, including trade-mark rights. Unfortunately, this is not the case.
It is not mandatory to register your business name as a trade-mark. Using a name for a certain period of time establishes your ownership of that name through common law and does give you certain rights to the name. However, these rights are quite limited compared to the rights afforded to a registered trade-mark owner. For example, if your trade-mark is not registered, your rights are limited to the geographic area where the trade-mark has been used, and upholding the rights of an unregistered trade-mark in the courts can be an onerous process.
On the other hand, registration of your trade-mark grants you the exclusive right to use the trade-mark across Canada for 15 years (renewable every 15 years). Once your trade-mark is registered, an application by another party to register a confusingly similar mark will be refused. Registered trade-mark owners also have more options available to them to deal with infringers, including the right to sue for depreciation of goodwill, and the right to request a nationwide injunction from the Federal Court of Canada. Trade-mark registration is prima facie evidence of your ownership of the trade-mark, so if there ever is a dispute about your trade-mark, the burden of proof is now on the party challenging your mark. In most cases, registered trade-marks become incontestable after five years. If your long-term business plan includes foreign expansion, a Canadian trade-mark registration will generally make it easier for you to register your mark internationally.
Having a registered mark can often make your business more marketable. A registered trade-mark can be a marketable asset that you can more readily license or sell than an unregistered mark. A registered trade-mark can also be potentially used as security for a business loan.
Your marketing budget likely includes money for signage, packaging, and business cards. Building your company’s reputation is important, and registering your mark early on could avoid wasted time, energy, and money spent on legal disputes in the future.
If you have any questions regarding trade-mark registration, please do not hesitate to contact a lawyer or trade-mark agent in the Intellectual Property department at Devry Smith Frank LLP. We have been assisting our clients grow and prosper since 1964.