In Canada, trademark rights can be acquired through use. Therefore, the question often arises, “What is the value of a trademark registration?”
In fact, there can be significant value in owning a valid trademark registration. Here is a list of ten clear benefits to registering a trademark:
1. The Trade-marks Act grants registered trademark owners exclusive statutory rights throughout Canada versus rights restricted to a particular geographical region in which reputation in the mark can be shown.
2. Suing for trademark infringement, which can be done only on the basis of a registered trademark, is generally easier (and less costly) than suing for passing off (which requires proving local goodwill and damages).
3. Owning a trademark registration provides a defence to an attack by a third party challenging the use of that mark. In other words, owning a registration serves as both a sword and a shield vis-à-vis other trademark owners.
4. Owning a registered trademark allows for an action under Section 22 (“Depreciation of Goodwill”) of the Trade-marks Act. For this cause of action a trademark registration is a pre-requisite. This section provides that it is an offence to use a mark registered by another in a manner that is likely to have the effect of depreciating the registered owner’s value of the goodwill in the mark. For this offence, it is not necessary to show confusion as to the source of the respective marks, and therefore this offence can be relied upon where there is harm to the aggrieved party, but not necessarily “confusion.”
5. A valid registered trademark has equity. It becomes an asset of the trademark owner’s business (which can be soldand/or licensed for money). Trademark registrations with strong distinctiveness can be extremely valuable assets.
6. A Canadian trademark registration allows for registration of a corresponding .ca domain name. In order to register a .ca domain name, registrants must satisfy the “Canadian Presence Requirements.” Non-Canadian entities/individuals who cannot otherwise satisfy these Requirements will be deemed to if they own a Canadian trademark registration that corresponds to the .ca domain name of interest. Furthermore, ownership of a trademark registration facilitates proof of rights in disputes brought pursuant to Canada’s Dispute Resolution Policy (for .ca domain names) and the Uniform Dispute Resolution Policy (for other domain name extensions, including .com and .org).
7. A registered trademark is a “recognized trademark” pursuant to the Charter of the French Language (the Charter). Under the Charter, the general rule is that all printed material used in commerce in Quebec (including packaging, labels, commercial publications, advertising, and public signage) must be in French, although another language (e.g., English) may also appear, as long as this other language displayed is not dominant or is less dominant than French in the case of public signage. However, there is an exception made for “recognized” trademarks. Because a registered trademark is a “recognized trademark” and so may appear exclusively in a language other than French (unless a French version has been registered). Moreover, the Office Québécois de la Langue Française, the Québec government’s body in charge of the protection of French language in Québec, has recently interpreted a “recognized” mark to mean only a registered mark
8. Prosecution of a trademark application results in a basic level of clearance. That means that the Trade-marks Office will only register marks that it does not consider to be confusingly similar with another registered or pending trademark. This provides a basic level of assurance to the applicant that there is not a confusingly similar mark on the Register.
9. The Trade-marks Office’s examination of third-party trademark applications provides some degree of “automatic policing” of the Register. This means that a trademark registrant can potentially reduce costs and resources associated with monitoring the trademarks of others.
10. Ownership of a registered trademark provides a ground of opposition against a third-party mark — confusion with a registered trademark. Each additional valid ground of opposition increases the chances of the opponent’s success.