The primary methods of protecting a brand name are by obtaining a registration under the Trademarks Act and by suing in the courts for infringement under the Act or asserting common law claims for passing off. Obtaining a registration is an effective first step in protecting a brand name as it will assist the owner in asserting rights relating to the registration.
The Trademarks Act provides a public registry system which is national in scope, showing for each registered trademark: the date of registration; a summary of the application for registration; a summary of all documents deposited with the application or filed affecting rights to the trademark; particulars of each renewal and particulars of each change of name and address. The system exists is to define and protect the rights of registered trademark owners. The registration system protects a brand name by providing public notice of rights and granting exclusive statutory rights to the brand owner.
This registration system co-exists with common law rights relating to trademarks and trade names. Common law rights are acquired through the actual use of a mark in association with goods or services. As a common law trademark becomes known and goodwill is associated with it, the common law trademark owner can assert claims against others who use confusing common law trademarks in the specific region or area that the common law trademark owner has built up goodwill. These rights are asserted by suing for passing off in the courts. A common law trademark owner may also assert its rights by opposing an application for the registration of a trademark.
If you have questions, please contact me at mckeown@gsnh.com.
Goldman Sloan Nash & Haber LLP 480 University Avenue, Suite 1600 Toronto, Ontario M5G 1V2 Direct Line: (416) 597-3371 Fax: (416) 597-3370 Email: mckeown@gsnh.com
These comments are general in nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.
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