Guide to the Care and Usage of Trade-marks
Barristers & Solicitors
Patent and Trade-mark Agents
What Is A Trade-mark?
A trade-mark is a word, words, name, symbol including letters or design or any combination of these used to identify the wares and services of your company. The mere use of your trade-mark to identify and distinguish your wares and services from those of another creates trade-mark rights. Additional rights are obtained through registration of the trade-mark in the Canadian Trade-marks Office. A trade-mark is to be distinguished from a trade name which identifies your company.
How To Use Your Trade-mark
In print, your trade-mark should always be used in a manner which distinguish it from the surrounding text, i.e. by capitalization, bold-faced print, different colours, underlining, etc.
If your trade-mark is a word mark, always spell your trade-mark exactly as it appears in your trade-mark registration certificate.
If your trade-mark is a logo or design, always use the precise pictorial representation as it appears in your trade-mark registration certificate.
The registered user provisions of the Canadian Trade-marks Act have been repealed. It is no longer necessary to enter into and file with the Canadian Trade-marks Office registered user applications for users of registered trade-marks in Canada. A user of any registered trade0mark should enter into a written trade-mark license agreement with the owner of the trade-mark.
This registration may be expunged at any time if the mark is not used in Canada in the manner which it has been registered. At any time or after three years from the registration date upon the request of a third party, the Registrar may require evidence that the trade-mark is in use in Canada. If the trade-mark is not in Canada and there are no special reasons for the absence of such use, the registration is liable to be expunged or limited to the wares and services in association with which the trade-mark is actually in use in Canada.
Trade-marks Are Not The Name For The Product
A trade-mark is a proper adjective and should, whenever possible, be followed by the descriptive name or the generic name of the product, i.e. KLEENEX tissues. In printed material, this should be done at least the first time the trade-mark appears.
In keeping with this, your trade-mark should never be used in the possessive or be pluralized. It is also neither a verb nor a description of the product.
Whenever possible a trade-mark notice should accompany the use of the trade-mark by the registrant. A trade-mark notice should always accompany the use of the trade-mark by a licensee. This notice can include ®, ™ or *. This can be accompanied by a footnote stating the ownership of the mark and, where applicable, that it is being used under license. ® should not be used unless the mark has been registered. If the products or the literature will be exported to the United States, the ® cannot be used unless the same owner is the owner of an equivalent U.S. trade-mark registration. It is therefore preferable to use ™ or * to identify trade-mark ownership if the products or literature are going to be exported to the United States. For export to other countries, local marking regulations should be ascertained.
If the labeling, advertising or other literature includes a reference to a company other than the registered owner of the trade-mark, then the name of the registered owner of the trade-mark should appear on the packaging or advertising as owner of the trade-mark.
Trade-mark rights exist and persist in Canada through use of the trade-mark. Failure to continuously use your trade-mark or failure to properly use your trade-mark may result in the registration being expunged on the basis that your trade-mark has been abandoned.
Your trade-marks are an asset to be used by you or your licensees. Such licensees must have an express agreement with the trade-mark owner. This is so, even if the use is by a related entity such as a subsidiary.
A Canadian trade-mark registration must be renewed every fifteen years from the date of registration. It may be renewed for a further fifteen year period upon application for renewal made prior to the expiration date or within six months of the renewal notice from the Registrar of Trade-marks. The renewal date should be noted on your records since failure to renew the registration at the appropriate time will result in expungement of the registration from the Register.
If you have any inquires about the above, please feel free to contact us:
Barristers & Solicitors
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