MaRS Library Trademarks and startups: Using Canadian trademark law to protect company value
A trademark is generally any word, phrase, design, symbol, number, shape of a product, packaging, colour, or combination of these elements with which your products (wares) and services can be distinguished from the competition. The trademark’s protection is limited to the mark’s specifically-associated wares and services. Canadian startups should learn the basics of Canadian trademark law to safeguard their company’s value.
Word marks and design marks
The trademark’s protection is limited to the mark’s specifically-associated wares and services.
There are two basic types of trademark: a word mark is the broadest in protection and it is literally just the words, without any formatting. The text itself functions as a trademark. A design mark can be a graphic with or without text, or text in a specific graphical style.
Apple Inc.’s registered word and design marks
|Word mark:||iPhone, iPhone 3GS|
|Design mark (with words):|
Trademarks must be used in association with specific products or services. For a product, the mark must be on the packaging of the product at the time of sale. For a service, the mark can be used in advertising the service or used when providing the service.
As an example, the Apple Inc. design mark for the iPhone includes both the word “iPhone” and the Apple logo. The wares and services it is used in association with are listed below.
|Design mark (with words):|
|Wares:||“Handheld mobile digital electronic devices […]”|
|Services:||“Telecommunications gateway services and providing consultation services […]”|
Certification marks are a type of trademark that identifies wares and services that meet a defined standard. Certification marks are not used by the organization that owns the mark, but are licensed to other companies to identify wares and services as meeting the standard.
The Canadian Standards Association (CSA) certification mark is a brand synonymous with safety standards. This certification mark indicates that the product bearing the mark meets certain safety standards.
Distinguishing guises are a type of trademark that uses the shape of the product, or its container, packaging or wrapping, to indicate the source of the product or service.
Sleeman Breweries Ltd. uses a specific type of beer bottle as a distinguishing guise.
Why should startups register a trademark?
Registering a trademark creates competitive advantage since it entitles the owner to the exclusive use of the mark with the associated wares and services. The right applies across Canada. The registration period is 15 years and is renewable indefinitely if there is continuous use of the mark. A registered trademark is considered evidence of ownership, which makes it more difficult for the legitimacy of the trademark to be challenged.
Coca-Cola®, for example, has been a registered trademark since September 29, 1932.
You can register a trademark by filing an application with the Canadian Intellectual Property Office (CIPO). The application is then examined to see if it meets the legal requirements of the Trade-marks Act.
What if I don’t register the trademark?
Trademark rights can develop through simply using a mark with a product or service over a period of time. However, these common-law rights are limited only to the geographical area in which the brand is recognized, and it is more difficult to enforce these common-law rights from a legal standpoint as compared to a registered trademark.
What is a trade name?
A trade name is your company’s operating name. While you may have done a search before selecting a trade name, you may not have performed a trademark search. You can register the trade name as a trademark if it is used as a trademark.
- Trade name: Research In Motion Limited
- Trademarks: RIM®, Research In Motion®, Blackberry®
Disclaimer: All company and product names may be trademarks of their respective owners.
Trade-marks Act (R.S., 1985, c. T-13). (2009, November 11). Retrieved November 25, 2009 from http://laws.justice..gc.ca/eng/T-13/index.html
Canadian Intellectual Property Office. (2009, November 11). Retrieved November 25, 2009, from http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/Home
World Intellectual Property Organization. Small and Medium Sized Enterprises (SMEs). Retrieved November 25, 2009, from http://www.wipo.int/sme/en/
- Terminating employees and consultants.
- Independent contractor agreement: Sample template.
- Patent strategy for tech startups: Protecting intellectual property.
- Industrial design, plant breeders’ rights, and integrated circuit topographies as intellectual property.
- Mobilizing Private Capital for Public Good: Canadian Task Force on Social Finance.