Marks Comparison

1. Registered Trademarks

Purpose:

  • Distinguish one entity’s goods or services from another’s (otherwise similar) goods or services, in the marketplace
  • Per the Trademarks Act, they help protect the business of their owners
  • They also help protect the public from confusing goods and services

Ownership:

  • The person named in the application is the owner

Rights:

  • Exclusive right to the mark in Canada, in association with the specific goods and services

Duration:

  • Lasts 15 years (soon 10 years)
  • Renewable
  • Can be cancelled if it loses distinctiveness, is not used for a period, or is otherwise successfully challenged

Location:

  • National (Canadian) protection only
  • Registering a trademark in Canada makes it easier to register the mark elsewhere

Costs:

  • Initial registration fee plus one-time upfront costs (more than official mark)
  • Ongoing renewal fees, unless owner lets it expire

Summary:

  • Do not protect use broadly, but rather bars similar and confusing use (“riding on coattails”)

ESDC Status:

  • ESDC has less than 5 registered trademarks

2. Official Marks

Purpose:

  • Protect a public authority
  • Remove official mark from pool of possible trademarks (whether registered or common law)

Ownership:

  • There is no owner, only a “public authority” responsible for the mark

Rights:

  • The public authority, and no one else except with its permission, may use the official mark in Canada

Duration:

  • Perpetual (do not expire)
  • Public Authority may “withdraw” it
  • Can be challenged in court

Location:

  • National (Canadian) protection only
  • May be protected elsewhere, via application to WIPO

Costs:

  • One-time upfront costs (less than trademark)
  • Indirect costs (maintenance)

Summary:

  • Very broad prohibition on others using the mark, but does not bar pre-existing uses (use which predates the official mark announcement)

ESDC Status:

3. Common Law Trademarks

Purpose:

  • Same as first paragraph under Registered Trademarks
  • Exist only in common law and so do not have Trademarks Act protections

Ownership:

  • The user (who must prove use!) is the owner

Rights:

  • Exclusive right to the mark, within the boundaries (e.g. geographical) of proven use

Duration:

  • Lasts as long as (provable) use of the mark continues
  • Can be eliminated if it loses distinctiveness, or if someone makes a registered trademark

Location:

  • Protected only within the boundaries established by proven use

Costs:

  • No fees or special requirements (other than documenting the use)

Summary:

  • Offers least protection
  • Simply protects against “passing off” or unfair competition

ESDC Status:

  • ESDC does not track common law trademarks