Help With Trademark Matters

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Typically, if you want registered ​​trademark protection somewhere – e.g., in Canada and/or the United States – you must apply for protection in each jurisdiction separately. Clients often may be interested in registering their trademarks in Canada. (Also, or instead, they may be interested in trademark registrations in the US and elsewhere.)​​

To get underway, your trademark lawyer / agent will need a list of any goods and services you already offer, and those you intend to offer, in association with the trademark.

You should note that, even without registering, a measure of protection will exist under the common law for any who have already been using the trademark in their business.

With a registration, however, a trademark owner typically will have much better rights than they would without one. For example, you could then have protection across Canada, with your trademark being presumed valid and enforceable against others.

You would then have a better basis to keep others from using / infringing on your trademark, passing off their goods and services as yours, and trading on the goodwill you’ve established in association with your trademark. And, yes, that includes an ability to sue them (should it come to that).

The trademark application procedure includes an advertisement phase, when your application will be advertised by the Canadian IP Office. At that time, any interested 3rd parties can come forward and oppose your application if, for example, they had been using the trademark for years but had never bothered to register it.

Also, apart from opposition proceedings, 3rd parties could seek to expunge any trademark registration you might obtain. But, 5 years after registration, your trademark registration will become incontestable.

A trademark affords protection against any confusingly similar use in the marketplace, not just against exact matches. And, so, it can be a powerful tool, with great value, for your business.

Of course, HOLBECHE LAW would be pleased to discuss these and any related issues in significantly greater detail, if you would like to get the firm’s help with trademark matters going forward.