If I can only afford to file one trademark application, should I protect my brand name or my logo?

A priority claim is made by listing the country, application number, and filing date of the first application for the same trademark for substantially the same products and/or services.

You can use your first application to claim priority rights in your trademark if you file international trademark applications within six months. A ‘priority claim’ allows you to retain your first rights in your trademark based on the filing date of your first application. For example, if you filed your first trademark application in Canada, but also want US protection, you can defer filing a US trademark application for up to six months and claim the advantage of the earlier filing date of your Canadian application.

Registered trademark rights are protected by the Trademarks Act and valid and enforceable Canada-wide. They give the trademark owner exclusive rights and anyone seeking to challenge the registration must carry the burden of proof. Unregistered trademark rights are governed by common law and limited to the specific geographical area (city, town, region) in which the trademark is used. To enforce unregistered rights, it’s up to the owner to prove that their trademark has gained significant goodwill and reputation in that geographical area overtime. It is very difficult and expensive to enforce a common law trademark, and most common law owners involved in a trademark dispute end up giving up their rights altogether simply because it is too expensive to go to court.

You can use the ® symbol beside your trademark only after it is registered. After successfully completing the application process, your trademark will be entered into the Register of Trademarks. The CIPO will send you a Certificate of Registration, which assigns your trademark’s official registration number and registration date. From that point onward, you can mark your trademark with the ® symbol (instead of the ™ symbol).

So long as your trademark search results are ‘clear’ (they indicate that your application is likely to succeed), we encourage you to launch your brand using the unregistered ™symbol.

Trademarks can be registered worldwide via the Madrid International Trademark System offered by the World Intellectual Property Organization (WIPO). There are over 100 countries that currently offer trademark protection under the Madrid System. You can select specific countries, or you can choose to protect your trademark in all applicable countries. For most of our clients, the Madrid System is far too expensive – it can cost tens of thousands in processing fees to register a trademark with the WIPO.

Before looking at international trademark protection, you should first apply to register your trademark in your home country. If you primarily offer your products and/or services in North America, you should file your application in the US and Canada. Registering in North America first will give you stronger grounds for registration in other countries.

Trademarks are more valuable than domain names. In fact, trademark ownership is required to truly own a domain name.

Wrong. Simply registering a domain name does not make it a trademark. The domain name is still subject to infringement under trademark law. Under law, domains are ‘borrowed.’ This means that if there were a domain dispute, the owner of the associated trademark rights will gain a transfer of the domain.

While these terms are easily confused, a ‘trade name’ is the name an individual or organization uses to conduct their business (it can be the registered business name or the incorporated name), while a ‘trademark’ is the unique ‘sign’ an individual or organization uses to distinguish their business in the marketplace and to identify their products and/or services.

No. Any individual, organization, business, trade union or association may apply to register their mark. If you initially file under your personal name and later wish to change the owner to be your corporation, a simple request made to the CIPO is all that is required.

In a nutshell, a trademark is a mark that allows you to have a unique identity in the marketplace, any special element such as a logo, name, slogan that you use to promote and distinguish your business from others.

‘CIPO’ stands for the Canadian Intellectual Property Office. Trademark applications in Canada are filed, examined, registered, and renewed with the CIPO.

A brand identity consists of three components that can be registered with the government: brand name, logo and tagline. Each component requires a separate trademark application. Word-based applications should be preceded by a trademark search to ensure your brand elements are unique within your market and business sector.

To be certain that your trademark is available (and to avoid potential conflicts), a pre-filing search should be conducted in each country where registration is desired to locate any existing trademarks that are similar to yours and used for similar products and/or services. Any search other than a full comprehensive trademark search (proper lawyer search) is risky.