Trademarks are a unique combination of letters, words, sounds or designs that are used to distinguish a company’s products and services from other products and services found on the market.

Customers are likely to return to and re-use high quality products and services that they know. As such, the goodwill that a trademark develops over time plays a large role in solidifying a company’s brand and reputation, which subsequently helps retain customers.

There are three main types of trademarks that can be protected Canada:

  • Ordinary Marks: a unique combination of letters, words, sounds or designs that are used to distinguish a company’s products and services.
  • Certification Marks: a mark that can be licensed to third parties, which demonstrates that their goods or services meet a certain standard.
  • Distinguishing Guise: the unique way that a product, its container, its wrapping or its packaging is shaped, which demonstrates that it is made by a particular company.

Although not required, registration of a trademark with the Canadian Intellectual Property Office provides significant advantages. Among other things, a non-registered trademark may only be protected locally in the geographical market boundary of the owner’s trade, while a registered trademark is protected across Canada. Furthermore, to be a recognized as a non-registered trademark, the owner must have developed market reputation and used the mark for a certain period of time.

Moreover, it can be a significant challenge for the unregistered trademark owner to enforce his or her rights in cases of unauthorized use (or “passing-off”). In such cases, the owner must prove that the opposing party misrepresented their trademark by passing it off as their own. In addition, the owner of an unregistered trademark must demonstrate the extent of damages suffered as a result of the opposing party’s unauthorized use.

Contact Us to find out if your trademark meets all legal requirements, or for advice about trademark infringement. Nadeau Young works in association with registered trademark agents, and we can therefore provide help in registering a trademark as well as representation in opposition proceedings.

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