Everything identifying a business – including its name, product and service names, slogans and logos – together produces a distinct brand image among its customers. Distinctive branding gives a business a competitive edge and promotes customer loyalty. It is therefore important that the brand, and its associated value, be protected. 

Why Register a Trademark?

While trademark registration is not strictly necessary, it provides significant benefits over unregistered trademarks, including:

• Protection throughout Canada regardless of actual geographical areas of use (an unregistered mark can be protected only in the areas in which the mark has been used and has acquired reputation).
• Additional rights and remedies under the Trade-marks Act, including the ability to sue for infringement.
• Proof of ownership in infringement actions (owners of unregistered marks must prove title and distinctiveness of the mark and reputation acquired as a result of use of the mark).
• Protection against imitation and misuse through means, including visibility during trademark clearance searches, and opposition and infringement proceedings.
• A potential source of income for trademark owners in licensing transactions (while unregistered trademarks can be licensed, licensees generally like the mark registered).
• Exclusive rights to use the mark across Canada for 15 years with no maintenance filing requirements (or 10 years under the new Trademarks Act), which may be renewed indefinitely.

Owners of registered marks have rights that can be asserted against junior users to stop use of conflicting marks. Owners of unregistered marks will need to prove their common law rights (and likely incur significant expense in doing so), and such enforcement action may not be successful.

A prime example of the importance of registering a trademark as a way of protecting a business was seen in the Federal Court decision of Black & Decker Corporation v. Piranha Abrasives Inc., 2015 FC 185. While the facts of the case worked against Black & Decker (“B&D”) with respect to their applications for passing off (a cause of action for enforcing unregistered rights) and depreciation of goodwill, the court upheld their application for trademark infringement on the basis that B&D had a current trademark registration for the brand in question and the defendant had infringed on this trademark. Accordingly, the court ordered an injunction against the defendant and awarded damages and costs to B&D.

Note: Registering a corporate name at a Corporate Registry is not synonymous with obtaining a trademark registration. Corporate names are not trademarks, unless they are used as such. A corporate name (unless used as a trademark) does not confer its owner with enforceable rights.