Ah. The age old question and dilemma! Should I legally protect my logo or save some money and simply look the other way? I wrote this short article to help you make that decision.
Let me preface with, despite my parents most likely wanting me to be one... I am not lawyer.
The information and insights I’ve provided in this article are from my own personal experience and online research. You should always seek legal counsel from a professional lawyer who specializes in trademark law or a registered trademark agent. The lawyers I use from time-to-time are Mason Bennett Johncox https://www.mbjlawyers.com, in Brooklin, Ontario. Great guys. If you use them, tell them I sent you!
Now let’s get into answering that question, shall we?
Here's the short version of my opinion.
Yes, if you are building a large national or international business. Doing business in a large geographical area increases the possibility that someone will have a potential conflict with your organizations brand. In addition, if this large company is conducting business at scale, or plans to, the cost to re-brand an entire organization can be devastating.
Yes, if you plan on producing a product or service sub-brand, distribute it and sell it across the country (or in other countries).
No (my opinion), if you are starting up a small, local business. Small businesses tend to have a very geographically localized market area and the odds of you conflicting with another business in such a small area is quite low (entrepreneurs in smaller towns tend to know each other personally, or have heard of each other). Small/micro businesses tend not to have the stomach (and sometimes financial resources) to pursue legal action. I'm not saying they won't, I'm saying the odds are a little less than the "big guys". First, here's some things you should know about registering a trademark.
1. Registering your logo with the Canadian Trademarks Office only helps protect your trademark in Canada. So if you are conducting business in another country your mark will not be protected in that country unless you go through the same process of registration in that country and every country you plan on conducting business.
2. Registering your logo with the Canadian Trademarks Office is not guaranteed protection against infringement on your rights.
3. It can take anywhere from 10 months to 18 months to go through the system, assuming there is no opposition along the way!
4. When you register a trademark in Canada you get the sole right to use that mark across Canada for 10 years. You can then renew your mark every 10 years after that. Renewal fees are $400 and transfer of trademark ownership costs $100. An additional $100 fee applies if you apply OFF-LINE.
5. You do not necessarily need to legally register your trademark. By using a trademark for a certain length of time (and being able to prove date of first use) you are afforded a certain amount of protection through common law, but know that if a legal challenge is made against your trademark it could result in a lengthy and expensive battle and you don’t have a very strong leg to stand on.
Now that I have those considerations out of the way, let’s dig into a the definition of a trademark and a quick overview of the process.
The government of Canada defines a trademark as “A trademark represents the reputation, experience, and expertise of a business while differentiating products and services from those of competitors.”
Here's how you register a trademark in Canada
Perform a trademark search on the Canadian Trademarks Database
This quickly gives you an opportunity to see if your trademark may be conflicting with other marks. Consider it a sort of pre-qualifier.
You can manage this process yourself by visiting http://www.ic.gc.ca/app/opic-cipo/trdmrks/srch/home?lang=eng
File your application
You’ll file your trademark application with the Canadian Trademarks Office with a non-refundable fee of $330 for each trademark. You must file a separate application for each trademark. However, one trademark application can cover a number of goods and services for a given trademark.
Initial Examination
Within the following four months, a trademark examiner will search the trademark database for any other trademarks that may cause confusion with your trademark. Should there be no issues, the examiner will then make an initial determination as to the registrability of the trademark. If there are any issues, you will have a chance to respond. If your answers do not satisfy the examiner you'll receive a letter explaining the refusal.
Approval
Once approved, the trademarks Office will submit for Advertisement.
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Your information is published in the trademarks Journal published on the government of Canada website every Wednesday. This gives others a chance to object before the trademark is officially registered. Should there be an opposition, proceedings can if successful, bring the application process to an end or otherwise delay the registration process for eighteen months or more. If the trademarks Office receives no objection within approximately two months they'll issue a Notice of Allowance.
Registration
To proceed to the final step of registration, a fee of two hundred dollars ($200.00) per trade-mark must be paid by the applicant within six (6) months of the date of the notice of allowance. Upon receipt of the registration fees, the trademarks Office will issue a certificate of registration for each duly registered trademark.
Conclusion
Legally registering a trademark can be time consuming and a little pricey. From my experience, 99% of small and micro businesses I deal with do NOT register their trademark. This most certainly doesn't mean you shouldn't, it is more of a question of risk tolerance and budget.
There is a lot of nuance and detail not provided in this article. For much more detail visit http://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/h_wr02360.html
Would you like my help starting your business or taking your current business to the next level? Email me directly, text me at 905.442.3323 or call me at the same number. It's always free to chat!
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