Incorporating your business and registering a trademark offer different levels of protection. When a business incorporates, whether provincially or federally, it means that the company has a right to carry on business in the jurisdiction in which it incorporated and no other company may operate in that jurisdiction under the same company name. Whereas obtaining a registered trademark in Canada puts the public on notice that the word or design is Federally protected and provides de facto evidence that you or your company has exclusive rights to use the trademark in Canada. The ultimate trump card!
Many companies do not simply paste its company name on its products or provide a service with the name ABC Incorporated Inc. Rather most companies develop a specific trade name and/or design (logo) as their brand that the public identifies with the company’s services or products. The trade name or design acts as a source indicator for the average consumer so that they can distinguish goods or services from one company to another.
For instance, the company name chosen by Nike when it incorporated was Nike International Ltd. However, the public doesn’t really know Nike through its company name. Rather, the public knows Nike as “Nike” or via its swoosh design. The word “Nike” and the swoosh design are registered trademarks owned by Nike International Ltd. Registering “Nike” and the swoosh design as trademarks owned by the company (and different variations of both) means that no other company or entity can produce similar products with the same or similar words or design. Nike’s phrase “Just Do It” is also a trademark owned by Nike. So, while “Just Do It” is not Nike’s company name, having it registered as a trademark means that no other company or entity can use this phrase for similar products.
There are situations where an entity can be afforded protection even if it has not registered its trade name or logos as a trademark. For example, say Nike operated throughout its existence with the logos, words and phrases that everyone has come to know, but hasn’t registered Nike as a trademark. If another company or entity decided to use the same or similar words, phrases or designs, solely based on Nike’s goodwill, Nike could likely successfully protect its names and designs and prevent another company or entity from using it under Common Law under an action known as ‘passing off’. However if the logo, name or phrase is not a registered trademark owned by you or your company, it would mote difficult to prevent others from using your names, phrases or logo and most costly to fight. Another issue arises if you or your company have been using a certain name or logo for a period of time without having registered a trademark for it and then another person or entity registers a trademark for your word, phrase or logo and begins using it. Opposing this would be an expensive and timely uphill battle. Consider registering your brands trade name, logo or phrase from inception. Registration provides notice that the logo, word or phrase is yours and you do not have to require another company or business to cease using the mark so long as you are actively using the trademark in the marketplace.
Another important note is that you do not have to incorporate to register a trademark. If you prefer to operate your business in a different format that aligns better with your current business plan, like sole proprietor, you can register the trademark to you personally. You can register a trademark as an individual, a partnership, an association, a joint venture, or a corporation.
Applying for a registered trademark provides a greater level of protection and value for your business. Obtaining a registered trademark in Canada provides Federal protection. Any name, logo, phrase or non-traditional mark that the company or business uses in association with its services or products that is not registered as a trademark, risks future issues in fighting another company or person that is trying to use the same or similar names or designs for similar products or services. Registering a trademark for your name and/or logo, whether you offer services or produce goods means that no one can use your name or logo, or one that is confusingly similar to it for similar things. If another company tries to use the same or similar word, name or design as you or your company, the process to halt such activity is much more straightforward because your mark is protected under the Trademarks Act and is registered with the Canadian Intellectual Property Office (‘CIPO’), searchable on the CIPO database.
Finally, a registered mark increases the value of your business should you sell the business as the buyer will have comfort that the business’ name is secure.
Written by Angela Gray and Pamela Heary