Legalese: December 2012

Protect your company identity by understanding trademarks.

The importance of developing and maintaining a recognizable, positive name in business is obvious to us all. Some brands become so well known that seeing its stamp or logo can let consumers immediately feel comfortable in the knowledge that they’re purchasing a high quality product or service. But how do you protect your business from those who may possibly try to unlawfully profit from your hard-earned success? One method is the use of trademarks. Having your business logo or name trademarked can help protect you from infringement by other people or companies.

Even if you haven’t registered your trademark you still have protection afforded to you by the common law, so long as you’ve been using it consistently. If a dispute were to arise over who had the right to a particular name or trademark you would be forced to prove that you had been using it prior to the other party claiming a right to the trademark.

If you had been using a logo for twenty years and a new business were to come along and try to register your trademark in an attempt to make it its own, you could prove it was yours and defeat the newcomer. So why register a trademark at all? Distilled to its essence, a trademark offers a strong proof that you have been using a trademark. Registration of a trademark makes it easier to show that you are its proper owner. This can save on court costs and help to avoid your having to dig up 20-year-old evidence of your use of the trademark.

Having a name or logo trademarked does not mean you have ownership of that name or logo in every circumstance. You only have ownership of it where you are using it.

So, for example, if you run a concrete company called Perfect Works and have trademarked that name, you will be protected from a rival concrete company using the same name. But if a hair salon opens up down the street from you called Perfect Works and you have never been involved in the beauty industry, your trademark will not stop that hair salon from carrying on business as Perfect Works.

But what if someone starts up an asphalt resurfacing business and they name it Perfect Works? The test for whether or not they are infringing on your trademark is, would the average, reasonably well-informed consumer be confused by the two uses of the trademark? In the case of an asphalting company there might be some confusion caused by them using the same name as a concrete company.  Every case comes down to its own particular facts, and the evidence that is put before (and accepted by) the court.

If someone is found to be infringing your trademark you could go to court for an injunction and, if successful, the court would order the infringing party to stop using the name or logo in question. If they had a fleet of trucks with the logo on it the court could order the logo be removed. If it was possible to show that the infringement had caused economic loss to you and your business you could seek damages for such a loss.

Anyone can register a trademark at the Canadian Intellectual Property Office website. However, using a trademarking agent can significantly speed up the process. A trademarking agent is a person who has been certified by CIPO as someone who is qualified to conduct a trademark registration. A full list of trademarking agents in Canada can be found on the CIPO website.  So if you are running a business and want to trademark your name or logo, visit the CIPO website to find out what steps are required and you will be able to better able to protect your business’ image in the community.

Nothing in this article should be interpreted as legal advice for your situation. If you are interested in trademarking your business name or logo you should consult an attorney licensed to practice in your jurisdiction and/or a trademarking agent located in your jurisdiction.