In a highly competitive market, a digital presence makes protecting a company’s identity essential. Thus, protecting your trademark has never been more crucial. A trademark plays a key role in distinguishing products or services. Indeed, it may take the form of a name, a logo, a sound, or even a texture. However, the legal framework governing trademarks is often misunderstood.

Below is a clear overview of the applicable law, the protections available, and the advantages of formal registration.

What is a trademark?

According to section 2 of the Trademarks Act (TMA), a trademark is a sign or a combination of signs that a person uses, or proposes to use, to distinguish their products or services from those of other businesses.

The TMA provides broad latitude as to the types of trademarks that may be protected. These may include, in particular :

• Words, personal names
• Designs, letters, numbers
• Colours or figurative elements
• Three-dimensional shapes
• Holograms or moving images
• Packaging configurations
• Sounds, scents, tastes, and textures
• The positioning of a sign on a product

The regulatory framework applicable in Canada and Quebec

Trademarks are primarily governed by :

• The Trademarks Act and its regulations;
• In Quebec, the Civil Code of Quebec, which governs rights related to unregistered trademarks (so-called “common law”).

Registered trademark vs. unregistered trademark : what protections?

a. Registered trademark

A trademark registered with CIPO benefits from :

• Protection valid throughout Canada;
• Clear and complete exclusive rights;
• Simplified proof of ownership and monopoly;
• Registration in the public register, a reference tool for third parties;
• Access to the Federal Court, whose orders have national scope.

• MD / ®: registered trademark
• MC / TM: unregistered trademark

Should you register your trademark?

Advantages of registration

• Establish clear proof of monopoly and exclusive use
• Obtain exclusive rights throughout Canada
• Facilitate remedies in the event of infringement
• Access federal courts
• Enhance the credibility and value of the business
• Prevent competitors from adopting similar trademarks

• The business uses the trademark only locally and in a limited manner
• You wish to avoid CIPO formalities or costs
• The trademark already benefits from minimal protection due to its use

The registered trademark and exclusive rights

Section 19 TMA is clear: registration confers an exclusive right to use the trademark throughout Canada for the goods or services covered.

The person who uses the trademark is its legitimate owner.

Trademark infringement

Section 20(1) TMA provides that infringement occurs, in particular, when a person :

• Sells or advertises products using a trademark that creates confusion
• Manufactures, imports, exports, or distributes products bearing a confusing trademark
• Sells labels or packaging that imitate a trademark
• Uses or distributes elements intended to mislead as to the source of goods or services

The concept of confusion (s. 6 TMA)

Confusion is established when the average consumer could believe in a common commercial origin. Thus, this may apply even if the products or services are not in the same category.

The court considers :

• The distinctiveness of the trademarks
• Their reputation
• The duration of use
• The nature of the trade
• Visual, phonetic, or conceptual resemblance

Conclusion : Why a trademark is an essential asset

Whether your business is just starting out or already well established, your trademark is one of your most valuable assets. It is the symbol of your reputation, your quality, and your differentiation in the marketplace.

While use alone provides minimal protection, registration offers unparalleled legal security, facilitates enforcement, and protects your future expansion. If you wish to protect or defend your trademark, our firm can assist you at every stage of this process.