Imagine you are a new designer clothing company, and you or your marketing team have created a logo for your clothing line. It is a brand-new logo that your team has invested tens of thousands of dollars into creating. It has taken months to create and has required extensive research and planning. You want to place the logo on your storefront and on your goods. However, you don’t want your competitor to steal your logo. You want to protect the inherent rights in your property. You have heard about registering your logo as a trademark. What is a registerable trademark? What’s the registration process like?
Registering your trademark is the best way to protect the intangible rights inherent in the property (the logo), so you can freely distinguish your goods from a competitor without having to worry about your competitor profiting off your hard work.
For a trademark to be registered, it must be considered a registerable trademark under the Trademarks Act RSC 1985, c T-13.
The Trademarks Act is a federal statute created to govern and protect trademarks. The first step in understanding whether your logo is a registerable trademark is to review the definition of a trademark in the Trademarks Act. Section 2 defines a trademark as a
(a) a sign or combination of signs that is used or proposed to be used by a person for the purpose of distinguishing or so as to distinguish their goods or services from those of others, or
(b) a certification mark; (marque de commerce)
Section 2 further states that a “sign includes a word, a personal name, a design, a letter, a numeral, a colour, a figurative element, a three-dimensional shape, a hologram, a moving image, a mode of packaging goods, a sound, a scent, a taste, a texture and the positioning of a sign”.
Your logo must either be used to distinguish your clothing line or is proposed to be used to distinguish your clothing line. Your logo must be such that is has the quality of distinctiveness whereby an ordinary Canadian consumer who is looking at the logo can distinguish your product from another product in Canada.
Let’s assume that your logo is a design element that you are proposing to use in order to distinguish your clothes from other clothing designers in Canada. Is this enough to make your logo a registerable trademark?
It is not enough that your logo meets the definition of a trademark in Section 2 of the Trademarks Act. Your logo must also meet the requirements in section 12 of the Trademarks Act. This section is often considered the “lynchpin” of the statutory scheme as to what constitutes a registrable trademark. Sections 12(1) and (2) can be confusing as they are written in the negative. Section 12(1) states that a trademark that comes within the statutory definition of a trademark is registrable provided it is not:
(a) a word that is primarily merely the name or the surname of an individual who is living or has died within the preceding thirty years;
(b) whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive in the English or French language of the character or quality of the goods or services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin;
(c) the name in any language of any of the goods or services in connection with which it is used or proposed to be used;
(d) confusing with a registered trademark;
(e) a sign or combination of signs whose adoption is prohibited by section 9 or 10;
(f) a denomination the adoption of which is prohibited by section 10.1;
(g) in whole or in part a protected geographical indication identifying a wine, where the trademark is to be registered in association with a wine not originating in a territory indicated by the geographical indication;
(h) in whole or in part a protected geographical indication identifying a spirit, where the trademark is to be registered in association with a spirit not originating in a territory indicated by the geographical
(h.1) in whole or in part a protected geographical indication, and the trademark is to be registered in association with an agricultural product or food — belonging to the same category, as set out in the schedule, as the agricultural product or food identified by the protected geographical indication — not originating in a territory indicated by the geographical indication; and
(i) subject to subsection 3(3) and paragraph 3(4)(a) of the Olympic and Paralympics Marks Act, a mark the adoption of which is prohibited by subsection 3(1) of that Act.
In addition, section 12(2) states that a “trademark is not registrable if, in relation to the goods or services in association with which it is used or proposed to be used, its features are dictated primarily by a utilitarian function.”
Sections 12(1)(a) and (b) are considered only relative bars to registration as, under certain fact situations, they can overcome the restrictions inherent in these subsections. As such, section 12(3) of the Trademarks Act states that even if a trademark is not registrable because of subsections 12(1)(a) and (b), it can still be “registrable if it is distinctive at the filing date of an application for its registration, determined without taking into account subsection 34(1), having regard to all the circumstances of the case including the length of time during which is has been used.”
A trademark that has been used and has become distinctive at the date of filing may still qualify as a registerable trademark even if it meets the definition in either 12(a) or 12(b). On the other hand, the remainder of sub-sections in 12(1) are absolute bars to registration, which means even if they are distinctive as of the date of filing, they still cannot be a registerable trademark.
Let’s assume that your design logo does not include a name, it is not descriptive, it does not include a non-English or French word, it is not confused with another registered trademark (more on that below), it is not one of the prohibitive marks in section 9 or 10, it is not related to a plant variety, is does not indicate a protected geographical location for wine or spirits, it does not relate to the Olympic and Paralympics Marks Act, and that it features are not dictated primarily by a utilitarian function (a future blog post will look more closely at each of these classifications).
We have now confirmed that your logo is in respect to a good (designer clothing), that you are purposing to place it on your clothing as to distinguish it from other designer clothes, and that you are going to sell your clothing line in Canada. We have also confirmed the logo is distinctive and Section 12 does not prevent its registration.
One you have passed sections 2 and 12, your next step would be to prepare an application in conformance with section 30. Section 30(1) simply re-states that “a person may file with the Registrar an application for the registration of a trademark in respect of goods or services if they are using or propose to use, and are entitled to use, the trademark in Canada in association with those goods or services.”
Section 30(2) provides the actual content that is required for the application to the Registrar:
(a) a statement in ordinary commercial terms of the goods or services in association with which the trademark is used or proposed to be used;
(b) in the case of a certification mark, particulars of the defined standard that the use of the certification mark is intended to indicate and a statement that the applicant is not engaged in the manufacture, sale, leasing or hiring of goods or the performance of services such as those in association with which the certification mark is used or proposed to be used;
(c) a representation or description, or both, that permits the trademark to be clearly defined and that complies with any prescribed requirements; and
(d) any prescribed information or statement.
Let’s assume that you have prepared each of these documents in section 30(2) and are ready to file said documents with the Registrar (a future blog post will go into more detail on the content of each of these documents). Can your logo now be registered as a trademark?
Section 16(1) states that “an applicant who has filed an application in according with subsection 30(2) for the registration of a registrable trademark is entitled, subject to section 38, to secure its registration in respect of the goods or services specified in the application unless at the filing date of the application or the date of first use of the trademark in Canada, whichever is earlier, it was confusing with
(a) a trademark that had been previously used in Canada or made known in Canada by any other person;
(b) a trademark in respect of which an application for registration had been previously filed in Canada by any other person; or
(c) a trade name that had been previously used in Canada by any other person.”
We have come back to this issue of a confusing trademark. Section 12 states that a trademark cannot be considered confusing with an already registered trademark, and now section 16 further requires that the trademark cannot be considered confusing with a trademark that is “already used or made know in Canada.” While you may have all the documents ready for filing under section 30, you are still required to ensure that your logo is not considered confusing with another registered or known trademark. This step requires that you preform targeted trademark research in your specific industry (a future blog post will go over how to conduct this research). However, let’s assume for now that you have completed all the research and are certain that your trademark is not confusing.
At this point, you can file your trademark application with the Registrar to register your logo as a trademark. Once the application is processed, the Registrar will advertise the application for purposes of opposition. If no opposition is filed to the application within the statutory time limit, the applied-for trademark will then be allowed for registration (a future blog post will look at opposition more closely). Once your logo is registered, then your logo is now considered a registered trademark! You can now be rest assured that the hard work, money, and time you spent in developing your logo is protected by the Trademarks Act.
Andrew Roy Legal understands that the registration process for a trademark can be daunting. We are here to make it simple. Andrew Roy Legal helps businesses of all sizes on every stage of the trademark process. Call us today at 587.896.2769 or book a free, no obligation zoom consultation
The information in IP Legal Iteration is not legal advice and does not establish an attorney-client relationship.
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