While Canadian trademark owners can enforce their rights without obtaining a registration, there are a number of significant advantages to registering a trademark in Canada, including:
- The Right to the Exclusive Use of the Mark in Canada. Section 19 of the Trademarks Act gives the owner of a registered trademark the exclusive right to use the mark throughout Canada in respect of the goods or services for which it has been registered unless the registration is shown to be invalid. This gives the owner of a registered trademark a prima facie defence to infringement.
- The Right to Bring an Infringement Action for Exclusive Use Across Canada. Pursuant to section 19 of the Trademarks Act, registration grants the owner of a mark the exclusive right to use the mark in Canada in respect of the goods or services for which it has been registered. This right applies across Canada, even if the mark is only used in a limited geographic area. The owner of an unregistered mark has protection, at common law, through a passing off action. The tort of passing off is aimed at preventing misrepresentation and requires the common law trademark owner to prove, on a balance of probabilities: (a) a reputation or goodwill in Canada; (b) misrepresentation by the defendant causing confusion; and (c) damages. Trademark infringement is generally considered to be easier to prove than passing off and requires less evidence. In a passing off action the common law trademark owner must establish the extent of its reputation and goodwill through evidence.
- The Right to Bring an Action for Depreciation of Goodwill. A registered trademark owner has the right to bring an action for depreciation of goodwill under section 22 of the Trademarks Act. This gives some protection against use of the trademark even by someone who is not a direct competitor.
- Access to the Federal Court. A registered mark enables the owner to take trade mark infringement proceedings in either the provincial courts or in the Federal Court. An order of the Federal Court is enforceable across Canada. The orders of provincial courts must be recognized in each jurisdiction where they are sought to be enforced.
- Incontestability. Under certain circumstances, a registered trademark becomes incontestable five years after registration. Failure to register a mark when entitled to do so may result in a third party having incontestable rights in the mark.
- Obstacle to Third Party Registration of a Confusing Mark. During the examination phase, the Trademarks Office will conduct a search to help ensure that the mark being applied for is not confusing with a previously registered trademark.
- Public Notice. It is prudent to conduct a search of the trademarks database before adopting a new trademark. Once an application has been formalized, the trademark will appear in the Canadian Trademarks Database and will likely come to the attention of other potential users. Similarly, corporate name searches (NUANS reports) are required for all new Canadian incorporations. These reports present trademark related information on proposed names.
- Border Protection. A registered Canadian trademark can form the basis of filing a Request for Assistance (“RFA”) with the Canada Border Services Agency (“CBSA”). CBSA, acting on a RFA can detain suspected shipments of counterfeit goods and provide the trademark owner with notice of such shipments. The trademark owner can then take legal proceedings against the importer of the counterfeit goods.
- Foreign Priority. A Canadian trademark registration gives certain advantages where the owner of the mark seeks to register it in foreign countries.
- Valuable Asset that can be Licensed and Transferred. A registered trademark is perceived to have increased value over a common law mark. A registered trademark can be assigned and licensed to others for use.
- Charter of the French Language. In the province of Quebec, the Charter of the French Language provides that French must appear on every product and its related advertising. A practice has developed creating a “trademark exception” to this general rule which allows for the use of English only for a registered trademark provided no French version of the trademark has been registered.
- Domain Name Rights. Particularly in the case of those entities that do not have a Canadian presence, the registration of a Canadian trademark will give rights to register a corresponding domain name in the .ca domain name registry. Registration also enables a trademark owner to use the Uniform Rapid Suspension System.
These important benefits make trademark registration an essential part of any brand protection strategy.
Read the Canada Trademarks Act here.