Updated: Aug 3
A trade-mark protects a "mark." Not all marks are a trademark and not all trade-marks are registerable under the Trade-marks Act, nor protected under the common law doctrine of passing off. A right in a trade-mark is only acquired through adoption or use and is only maintained through use.
Unlike a patent, which protects products and processes, a trademark relates to the distinctiveness of its marketing. Trademark seeks to indicate the source of a product, so that consumers know what they are buying and from whom.
The Trade-marks Act, which is a federal statue and applies throughout Canada, provides a definition of a trademark:
(a) a mark that is used by a person for the purpose of distinguishing or so as to
distinguish wares or services manufactured, sold, leased, hired or performed by him from
those manufactured, sold, leased, hired or performed by others,
(b) a certification mark,
(c) a distinguishing guise, or
(d) a proposed trade mark.
Let's focus on the first definition as it is the most common one. A trademark must be a mark and it must be used to distinguish one's wares from those of another. While Canadian case law has provided a comprehensive discussion of "mark" and "distinguishing," we will provide a more concise explanation. A "mark" must be something that is represented visually. It can be associated both with products and with services. A trade-mark is some type of visual mark that a person uses in a public situation to identify his goods that he makes for sale in such a market (or services performed by him). The owner of the marks must use the trademark for distinguishing his wares or services from those of others, or, if the owner is not using the trademark to distinguish his wares, that marks does and in fact actually distinguish his wares.
We can apply this legalistic definition to a common situation. The Nike Swoosh is a registered trademark. It's a visual mark, located on all Nike products, and it distinguishes a Nike shoe from that of another brand (say, Adidas). In this situation, it does not matter whether Nike developed the Swoosh specifically to distinguish it from other brands. The mere fact that it so clearly does distinguish itself from other brands is enough to classify the Swoosh as a trademark.
When a consumer goes to a sports store, he sees the Swoosh on a pair of shoes. He does not need to independently verify the manufacturer or the quality of the shoe. He knows, based solely on that mark, that Nike manufactures the shoe. For Nike, that Swoosh is often enough to have a consumer purchase their product. One can imagine the value associated with that simple design!
Are you a business owner or content creator that may have a trade-mark, but has not registered it yet? Contact us today, and we can help you protect it!
Are you a business owner or content creator that has either a registered or unregistered trade-mark, and another individual or corporation is using your trade-mark without your consent? Contact us today, and we will help fight for you!
The information in IP Legal Iteration is not legal advice and does not establish an attorney-client relationship.
© 2022 Andrew Roy