Trade-Marks in Canada: Selecting a Strong Mark
- Bain, Paul E.
- Industry Alerts
Click “Subscribe Now” to get attorney insights on the latest developments in a range of services and industries.
Given the potential value of trade-marks in almost every business and the costs of building brand awareness in the marketplace, the selection of an enforceable trade-mark is crucial. Clients ought to consider the matters set out below before investing time and money in potential marks for their businesses.
1. Definition of Trade-Mark
‘Trade-mark’ is the legal term for a brand name. A trade-mark is almost anything that is used to identify a product or service and to distinguish it from the products or services of others; it can be a word or words, an Internet domain name, a shape, a logo, a slogan or ‘tag-line’, a colour applied to a product, a representation of a label, a series of musical notes, or a combination of any of these.
2. Selection of an Enforceable Trade-Mark
Enforceability is the ability of the owner of a mark to stop others from using similar trade-marks in association with similar products and services.
A trade-mark is stronger and more easily enforceable if it is ‘distinctive’, i.e. if it actually serves to distinguish the goods or services of the owner of that mark from those of others. There are four categories of trade-marks (from strongest to weakest):
- Invented/Coined trade-marks are words or phrases that have no meaning on their own and that do not suggest the products or services that they are used in association with; e.g. the trade-marks ESSO and GOOGLE have no intrinsic meaning. Inventive marks are the most enforceable as they are the most distinctive and are therefore accorded the widest protection. (Though over time they may become generic)
- Arbitrary trade-marks are words that have a meaning, but not a meaning that describes the relevant goods or services; e.g. the marks AMAZON and STARBUCKS, which do not describe or suggest books or coffee, respectively.
- Suggestive trade-marks suggest a quality or characteristic but do not describe the products or services that they are used in association with; e.g. MICROSOFT for computer software.
- Descriptive or generic trade-marks are the most difficult marks to enforce. Such marks describe a quality or characteristic of the products or services that they are used in association with; e.g. McDonald’s cannot register “hamburger” as a mark and prevent others from using it.
3. Searches/ Pre-Clearance
There are a number of potential pitfalls which should be avoided when selecting a trade-mark. For example, a trade-mark will not be enforceable, and may be infringing, if it is confusing with a trade-mark or business name that is already in use or registered with similar products or services. The best way to identify such problems is to first conduct appropriate searches.
4. Other Issues in Selection of Trade-Marks
Trade-marks that are the surname of an individual are usually a poor choice, as are trademarks that are well-known geographic place names or that are translations of descriptive words in languages other than French or English. Other than descriptive marks, words or symbols that are commonly used in an industry by others, are also weak trade-marks, as are marks comprised only of letters, numbers or acronyms.
FOR MORE INFORMATION CONTACT:
Paul Bain, is a partner in Dickinson Wright’s Toronto office. He can be reached at 416.646.8364 or pbain@dickinsonwright.com.
This client alert is provided on an ‘as is’ basis and for general information purposes only. It should not be used as a substitute for, or construed as, specific legal advice. All liability is expressly disclaimed.
For a printable version of this trade-mark client alert, click here.
Related Practices
Recent Insights
- Industry Alerts Trade-Marks in Canada: Procedures and Estimated Costs
- Industry Alerts Trade-Marks in Canada: Proper Use and Maintenance
- Industry Alerts Expediting Examination - Pre-Assessment Letters
- March 27, 2025 Media Mentions Paul Bain was recently mentioned in the Info article, "Les ambitions nationales de la Biennale d’art de Toronto."
- March 14, 2025 Events Leading the Way in Space Law: Dickinson Wright at Space Beach Law Lab 2025
- March 5, 2025 In the News Ramey Orow Joins Dickinson Wright Troy Office
- February 26, 2025 In the News Sameeul Haque Joins Dickinson Wright Chicago Office
- February 12, 2025 In the News Crunchbase News recently published William Honaker’s article, “How President Trump Could Reshape Intellectual Property And Small Business In The US.”
- February 4, 2025 In the News Nicholas Lee Joins Dickinson Wright Chicago Office as a Member