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)
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