The concept of a trademark is often misinterpreted by businesspeople. This legal protection granted by the Trademarks Act (the “Act”) can be beneficial both legally and reputationally, whether it is to protect the name of the entity, the goods and/or the services it offers or its image. This article will explain why it is not sufficient to register a business name with the Registraire des entreprises du Québec (the “Register”) in order to protect its trademark, as well as the advantages of holding a registration certificate issued by the Canadian Intellectual Property Office (“CIPO”).
Corporation name in the Register
The process of starting a business first involves finding a name that is unique and not already in use. The Register, or Industry Canada in the context of a federally chartered corporation, will refuse any request for the constitution and registration of a corporation, for which the name chosen is already used and/or reserved by another entity. However, corporations can have other names (or borrowed names), i.e. a name, other than their legal name, used for the conduct of business in Québec. The borrowed names must be disclosed to the Register, but they are not subject to its formal verification.
A CIPO registered trademark
A trademark is a sign or a combination of signs that is used or proposed to be used by a person y to distinguish their goods and services from other goods and services available in the market. The trademark can take many forms, such as words, designs, tastes, textures, moving images, etc. It is also possible to register the legal name of a company, only if the legal name is used to identify the source of the good or service, subject to compliance with other provisions of the Act.
Registration of the trademark with CIPO is not mandatory, since using the trademark for a certain period of time may confer rights on the user under Québec civil law. However, in the event of a dispute, proof of use of a trademark, without it being registered, can be difficult, costly and insufficient to protect its use.
The registration of a trademark results in a registration certificate, which constitutes an exclusive right to use the trademark anywhere in Canada, for a period of 10 years, renewable. The Canadian Trademark Database, which is accessible to the public, lists all the trademarks currently in force in Canada. It is also possible to register a trademark 6 months prior to the start of the corporation’s activities, and thus reserve its exclusive use. The greatest benefits of registering a trademark with the CIPO are obtaining the right to exclusive use of the trademark and facilitating proof of this in the event of litigation. Registering the name of the corporation with the Registrar does not provide these legal protections.
The other protections offered by trademark registration are of reputational nature. In fact, since the Canadian Trademark Database is accessible to the public at all times, there is a presumption of public knowledge. This is a serious deterrent to anyone who wants to use the registered trademark. Finally, the Canadian Trademark Database allows a businessman to better prepare the development of his/her business plan, since a search in the Canadian Trademark Database will reveal many of its competitors and thus better understand their position in the chosen industry.
In conclusion, registering a business name with the Register does not provide the legal and reputational protections that registering the trademark with the CIPO provides. Trademark registration is a way to protect a corporation’s image and the goods and services it offers, and it is a valuable piece of intellectual property for any ambitious business.