Trademark Registration in Canada; Worth the Investment?
My client intends to invest a substantial amount of money in packaging, signage, and marketing their brand. They have long term plans to expand beyond their local operations, to a national presence; possibly even an international one. They know that it would significantly hurt their business if someone else adopted a similar or confusing name anywhere in Canada, whether a competitor or not. They want to avoid the substantial cost and loss of reputation that would come from being forced to change their name later.
There is no legal requirement to register a trademark in Canada, and every small business needs to ask themselves the question, “should I bother to register a trademark, and if so, should I do it now or wait?” In the case of my client, the answer is a resounding yes, and as soon as possible.
Common Law Trademark Rights versus Registered Trademark Rights
Although trademark registration isn’t strictly necessary, common-law trademark rights are quite limited compared to the rights of a registered trademark owner. If your trademark is not registered your trademark rights are limited to the geographic area where the trademark has been used, and you will have to prove ownership of your trademark to the Court. On the other hand, once you have registered your trademark, you will have the exclusive right to use the trademark across Canada for 15 years (renewable for 15 years at a time) and will have the right to initiate infringement proceedings in either the Provincial or Federal Courts (which owners of unregistered trademarks can’t do). Trademark registration is prima facie evidence of your ownership of a trademark, so if there is ever a dispute about your trademark, the burden of proof is on the challenger. Canadian trademark registration can also be used to claim priority in registering your trademark in foreign countries.
Do I need a Lawyer?
It is possible to file a trademark application on your own. However, hiring a lawyer and have that lawyer conduct the appropriate searches is some of the best money that a business can spend when starting a new brand. It allows for a business to proceed with brand development with confidence that their investment is secure. As the trademark registration can take a year or sometimes longer, and as businesses usually cannot simply wait with their brands sitting dormant, hiring a lawyer to assess the landscape and provide advice with respect to the potential pitfalls and opportunities before making a significant brand investment is smart money.
You also don’t have to wait until your trademark is registered to use the mark. When you apply for registration you will have to indicate the date of first use of the mark in commerce (or a proposed first use). The date of first use can be an important issue in litigation. The Supreme Court of Canada has confirmed that it is the use of a mark and not registration that confers priority of title and the exclusive right to the trademark. Once again, however, an entrepreneur needs confidence that their trademark application has the greatest chance of success, as a failed application (especially after investing significant funds into a mark and brand) can be devastating to a business. Often, a lawyer is the only resource qualified enough to give a company the confidence to move forward with the expenditure of significant capital and to do those things necessary to develop and promote a brand in the months before the registration of the trademark is confirmed and finalized.
Trademark registration also costs time and money. The basic cost of trademark registration includes a non-refundable filing fee of $250.00 for each trademark. Repeated failed trademark applications can quickly escalate costs, and delay registration.
But don’t take my word for it. According to a new study done in the United States by the University of North Carolina Law School entitled “Do Trademark Lawyers Matter?”, trademark applicants who hire experienced counsel have a much greater chance of having their mark approved by the US Patent and Trademark Office than a less experienced filers who don’t hire a lawyer. The purpose of the review was to measure the impact of lawyers on the trademark process by comparing applications filed by lawyers to those filed without the assistance of a lawyer. 82% of applicants who hired counsel had their trademarks published in the registrar, compared with 60% of applicants without counsel, according to the study. The group least likely to have their trademark reach publication were the unrepresented applicants with the last experience who achieved publication only 57% of the time, the study said, whereas the most experienced lawyers were successful 83% of the time. The study included analysis of trademark applications filed from 1984 to 2010. According to the author, trademark law “is an area where lawyers can make a dramatic difference, especially to those with experience in making trademark applications.”
The Bottom Line
At the end of the day, an experienced trademark lawyer can bring much more value to you in securing your trademark portfolio than he or she costs. In comparison with the amount most businesses invest in their brand, the cost of hiring a lawyer is likely insignificant. On top of which, getting advice from a lawyer is one of the best ways to ensure that your investment is secure.
Troy Harwood-Jones is a commercial lawyer and corporate litigator at PKF Lawyers, in Winnipeg, Manitoba. Troy’s primary areas of practice are in the arenas of Civil Litigation, Corporate and Commercial Law, and Wills, Estates, and Elder Law. Troy has unique expertise in the practice areas relating to e-commerce businesses as well as Trademarks and Intellectual Property Law.