Law Articles And Legal Issues

Six Common Mistakes Under Canadian Trade-Mark Law

As more and more companies are seeking to distinguish their products and services in the marketplace by registering their names, slogans or designs as trade-marks, many companies which do not retain a Canadian lawyer or trade-mark agent often make fundamental mistakes. Among the most common mistakes are the following.

1. A Company Name is not a Trade-mark.

A company name is the legal name under which a company carries on business. However, unless the company name is used as a trade-mark, it cannot be registered under the Canadian Trade-marks Act. For example:

" Acme Insurance Ltd. markets life insurance under Goodlife Insurance. Acme Insurance Ltd. is the company name, GoodLife Insurance the trade-mark. Acme Insurance Ltd. is not used as a trade-mark, GoodLife Insurance is.

" Acme Insurance Ltd. markets life insurance under Acme Life. Acme is part of its company name, but it is also used as a trade-mark to distinguish its insurance policies from those of other insurance providers.

The important point here is that the registration of a company and the registration a trade-mark are two distinct processes. Federal and provincial company offices do not search the Trade-marks Office database to determine if a proposed company name is a registered trade-mark; nor does the Trade-marks Office search federal and provincial company offices to determine if a proposed trade-mark is registered as a company name. The two processes are unrelated, and the trade-mark must be registered separately.

2. Theres no Requirement to use a Trade-mark before Registering.

Many companies believe that they must commence use of their trade-mark before registering it. In Canada, as in many other countries, trade-marks may be filed on the basis of intention to use. An application which is filed on this basis must specify the products and services that the company intends to use in association with the trade-mark. Once the application has been filed, the company generally has three (3) years from the date of filing to file a Declaration of Use confirming the use of the trade-mark in association with the specified wares and services. The Declaration of Use may be filed anytime within the three (3) year period, but must not include any products and services that have not been used in association with the trade-mark.

3. Search before Using a Trade-mark.

It is always advisable to conduct a trade-mark search before commencing use of a trade-mark. This will ensure that the trade-mark does not infringe another trade-mark and will avoid the wasted expense of such things as advertising and labeling.

A trade-mark search may be conducted through the Canadian Intellectual Property Office Trade-marks database by inserting the trade-mark in the search text box and selecting the appropriate search field. If the search does not reveal an exact match, a secondary search should be conducted based on such factors as the elements of the trade-mark (where, for example, the trade-mark comprises more than one word), different spellings of the word(s) comprising the trade-mark and the sound of the trade-mark. This is referred to as a comprehensive search and is advisable to ensure that the trade-mark is not confusing with a registered trade-mark and therefore unregistrable.

4. Some Trade-marks are not Registrable.

Not all trade-marks are registrable. Among the trade-marks that are not registrable under the Canadian Trade-marks Act are:

" trade-marks that are clearly descriptive of the character or quality of the products or services,

" trade-marks that are deceptively misdescriptive of the character or quality of the products or services,

" trade-marks that are clearly descriptive or deceptively misdescriptive of the origin of the products or services,

" trade-marks that are the name of the products or services, and

" trade-marks that are confusing with a registered trade-mark.

There are a number of tests which have been developed by the courts which are employed by the Trade-marks Office in determining whether a trade-mark is registrable. In general terms, however, where an application for registration of a trade-mark falls within one of these categories, the trade-mark will not be registrable.

5. International Classifications Dont Apply.

Products and services which are used in association with a trade-mark must be described in ordinary commercial terms. In many countries such as the United States this is done by using International Trade-mark Classes. The International Trade-mark Classes are categorized into 45 classes, Classes 1-34 relating to products and Classes 35-45 to services. Canada does not use this system and therefore trade-marks must be described in ordinary commercial terms for Canadian filing purposes.

For example, Class 32 refers to light beverages which are enumerated as: beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages. For Canadian filing purposes, the wares non-alcoholic beverages require further specification, for example carbonated drinks, colas, energy drinks, sports drinks, drinking water, fruit-based soft drinks, fruit juices, hot chocolate, milk, non-dairy soy, coffee or tea.

6. Copyright may reside in Trade-marks and must be Acquired.

Where a trade-mark is in the form of a design, the design will be subject to copyright protection, as well as trade-mark protection. If a trade-mark owner retains a graphic artist to develop and design a trade-mark, the trade-mark owner should obtain all rights to the design, including the ability to make changes to the design. This is generally done by means of a simple contract known as an Assignment.

In Canada, copyright need not be registered as rights to the design arise at the time of creation, which provides the copyright owner with remedies for copyright infringement at common law. These remedies are additional to the remedies that the trade-mark owner will have under the Canadian Trade-marks Act.

Timmis Law Corp specializes in helping you to perform a trademark search and to register a trademark in Canada.

Other Article Sites

findabook.com  moneycd.info  a-mortgage.info   about-lemon-laws.info  aboutstudentloans.info
all-about-publishing.info  auctions-articles.info  bestcollege-university.com  bestispconnection.com
biblefolder.com  blogger-website.com  books-used.info  brokers-guide.info  buywindows.info  cable-dsl.info
career-miner.com  carpel-tunnel.info  cashinaflash.info  cashloanreviews.info  casinobell.com  chat-house.info
clearmycredit.info  collegeloantips.info  crones.info  depression-articles.info   dirnic.net  dishguides.info
divers-below.com  expodog.info   financewizz.com  fire-insurance.info  getgood.info  handleit.net   it-idea.info
health-supplies.info  hosting-right.com  insidealert.com  insurance-facts.info  jobs-employment.info
justgood.info  lookgold.net   lowcost-travel.info  money-source.info  myhostzone.info  numisblog.com
peoplesearchfinder.info  pr-articles.info  realeas.com   refinancing-guides.info  spyware-remove.info
telelot.info  the-law.info   toppaid.info  travel-deals.info  travelcorrect.com  wedding-guide-site.com
your-blog.info  your-credit.info

Other Law Sites
Search The Internet For Other Law Sites

Law Books
Search For Law Books At FindaBook.com

Los Angeles Divorce Attorneys, The Family Law Company, Opens a New Office in Beverly Hills
Los Angeles family law attorney and founder of The Family Law Company Pamela Wright opens a new office in Beverly Hills. The Family Law Company offers high-quality legal services at affordable rates for divorce, paternity, child custody and child support actions because justice doesn't have to cost a fortune.

Legal Services of Labor Law Attorneys
Labor law attorneys deal with a broad range of labor issues mainly related to how employers treat employees, former employees and applicants for employment. This includes all the areas of the employer-employee relationship, negotiations, and the collective bargaining agreement.

Understanding The Law...Criminal Law
The following Q&A's have been provided to help you better understand Criminal Law.

Lemon Law Attorney, Dana Lynn Tarquini, Featured at Lemon Law Administrators Conference
Ms. Tarquini, one of the country's most prominent lemon law attorneys, participated in panel discussion at the 10th anniversary lemon law administrators conference in Atlantic City.

Fresno Family Law Attorney Says Collaborative Law Can Provide Smoother and More Affordable Divorce
Fresno family law attorney Erin Rhames-Childs says collaborative law can help people can reduce the conflict and cost of divorce litigation.

CalBizCentral Announces Booklets to Help Businesses Navigate State, Federal Employment Laws, Reduce Legal Risk
CalChamber's CalBizCentral 'What Every Manager Needs to Know About' series provides training managers need to comply with confusing laws.

Elizabeth A. Kreitzer, Certified Family Law Specialist, Joins Klinedinst Family Law Group
The California-based law firm of Klinedinst PC has added Elizabeth A. Kreitzer, Certified Family Law Specialist, to its expanding Family Law practice group. Ms. Kreitzer's addition, combined with the strength of the firm's existing litigation teams, will help ensure that every client receives sophisticated, professional and compassionate representation, Ms. Kreitzer is the recipient of the Michael C. Shea Chair in 2005, and adds a wealth of family law knowledge to the department. She is experienced in working with sophisticated clients handle complex family law issues, including divorce, paternity and custody disputes, prenuptial agreements, adoption proceedings, and other family law matters.

Pending Federal Law Threatens All Copyright Owners says the Hodgson Law Group
The Shawn Bentley Orphan Works Act of 2008 (S. 2913) "Orphan Works Act of 2008" (H.R. 5889) allows anyone to use a copyrighted work without first obtaining permission. The user can later claim that a diligent search was conducted but the owner could not be found in any later action for infringement. This new legislation will apply to all copyright owners whether or not the work was previously registered with the Copyright Office. The legislation threatens the rights of artists, photographers, composers, film makers, publishers, and visual artists says the Hodgson Law Group. The Copyright Office not only endorses this legislation, but also advocates further changes that go beyond the proposed statute in reducing copyright protection. T...

Tax Attorney Roni Deutch Analyzes Proposed Tax Laws in New Featured Blog
After nearly seven months of blogging, tax attorney Roni Deutch has posted a new featured blog analyzing the causes and possible outcomes of a new proposal that is being backed by the Internal Revenue Service. The proposal is part of President Bush's 2008 budget, and attempts to lower the gap in what taxpayers pay and what they should pay in taxes, by requiring many Internet companies to collect personal data from their users.

Tax Attorney Web Site Warns of Upcoming Tax Laws in 2008
TaxAttorneyHelp.com, an online network of tax attorneys, is preparing to assist taxpayers with new laws in the coming year.

Monroe, N.C. Family Law Attorneys Merge Practices to Form Stepp Lehnhardt Law Group
Donna Stepp and Dana Lehnhardt combine local practices and operations, creating 4-attorney general practice law firm with emphasis on family law

Houston Bankruptcy and Family Law Practice Announces Affiliation with Houston Civil Litigation, Business Law and Immigration Law Firm
Houston bankruptcy attorney Michael Busby of Busby & Associates joins forces with Carlos Peniche & Michael Rojas of Peniche and Rojas to offer Texans comprehensive legal services - from divorce, personal injury and civil litigation to contract disputes, employment law and immigration services.

New Legal Guide to Divorce by Family Law Expert
A brand new legal guide to divorce, "Divorce and Separation Today", has been newly published by DragonCub. Far more useful than the average divorce guide, it delves into how the divorce courts operate as well as providing practical and sensible advice on emotional and other sensitive areas. It is an essential guide for anyone considering or going through divorce.

Tax Attorney Site Answering More Questions on New Tax Laws
TaxAttornyHelp.com, an online tax law attorney service provider, has answers to questions on new tax laws that affect filers in 2008.