On September 10, 2012, New Zealand acceded to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks.

This leaves Canada the only developed country that does not participate in the Madrid system.

Which brings me back to my older post, Canada’s Participation in International Treaties on Protection of Intellectual Property.

As I’ve just mentioned, Mincov Law Corporation has just celebrated its first birthday.

Not only do I have tons of great friends among founders and co-founders of Vancouver tech startups, I know the challenges surrounding running a startup firsthand.

For many startups the cost of getting a trademark through a trademark agent may be prohibitive, so they end up without a trademark or with a poorly drafted trademark application.

I want to extend a helping hand and announce that throughout September of 2012 Mincov Law Corporation will be offering its most comprehensive trademark registration package valued at $3,500 + HST to any business that has been incorporated for less than 2 years in Canada for only…

Become the next , or for half the price in September!

Yesterday, I attended a Franchise Show in Vancouver.

It was a great event, even though less populated than expected due to good weather.

One thing I could not help but notice was the use by many franchisors and potential franchisors of the ™ sign next to their trademarks.

In context of franchising, this is a symptom of one of two very problematic scenarios.

In the first scenario, the franchisor actually has obtained the registration of its trademark, but continues to use the ™ sign in its marketing materials instead of the ® sign. Not only does this substantially depreciate the perceived value of the franchisor’s brand in the eyes of potential franchisees, such use is also confusing.

In the second scenario, the franchisor has not even applied for registration of its trademark. Granted, there are many businesses for which a registered trademark is an unnecessary luxury. This is the case where the trademark is not something that causes customers to buy from the business. Things are very different, however, in case of franchising. It is the brand that is the franchisor’s product, not what the brand offers to end customers. If a franchisor hopes to build a Canada-wide net of franchisees, it cannot rely on the notoriety of its trademark in one Province. Without a federally registered trademark, the value of the franchisor’s offering is questionable.

To recap, these are some of the benefits that a registered trademark (®) has over an unregistered trademark (™) in Canada:

– The right of exclusive use of the trade-mark across Canada with goods and services covered in the registration, with no geographical limitation to the area where reputation and goodwill has been established;

– No one can register a trademark that is the same as or confusingly similar with your registered trademark;

– The registration is prima facie evidence of your ownership and in a dispute involving a registered trademark, you do not have to prove ownership, the burden of proof is on the challenger;

– Registrar of Trade-marks will notify the owner of a registered trademark of the advertisement of somebody else’s trademark application if the Registrar is in doubt whether that other trademark is registrable;

– The right to sue for trademark infringement pursuant to Sections 19 and 20 of the Trade-marks Act;

– The right to sue for depreciation of the value of the goodwill pursuant to Section 22 of the Trade-marks Act;

– A registered trademark becomes incontestable after being registered for five years: a person who relies on common law rights may be unable to protect and register its trademark if another party registers a confusingly similar trademark and that mark is on the register for more than five years.

If you run a business that uses or sees franchising as its business model, wait no longer – Register your trademark in Canada now!

One of the most common misconceptions surrounding the law of trademarks in Canada is how trademarks relate to trade names. This misconception can have very costly consequences.

Trade names are used to identify a business or a company. Trade names are the “who” of the business. Customers do business with a business bearing the trade name.

Trademarks are used to identify products or services. Trademarks are the “what” of the business. Customers buy products and services bearing the trademark.

In very simplistic terms, customers buy trademarks from trade names.

Every business registered with the Registrar of Companies or incorporated (provincially or federally) has a trade name. But neither the reservation of a corporate name nor the formation of a corporation create a right to use the business name of the corporation in that jurisdiction.

How can that be? The government registers my business name and I can’t use it? Yes. Unfortunately, corporate registries don’t really check if the name submitted for the registration violates any prior rights. In other words, just because a provincial corporate registry approved your name for registration does not mean that you don’t violate someone else’s prior right (in a trade name or a trademark) and that you will not be compelled to change it in the future.

Rights in corporate names are treated like rights in unregistered trademarks, which means that they are nonexistent outside the geographical areas where the business is actually making use of and it known for its name.

Even if you register a corporate name that no one else had thought of before, it does not give you the right to stop others from using it, unless you can prove that other person’s use of the name creates confusion.

Just because you came up with a fancy company name that helps you attract customers for whatever products or services you are offering does not mean that your name, or brand, is a trademark. If you are not using your trade name as a trademark, your don’t have trademark protection for your trade name.

Trade name can be registered as a trademark, but only if you use it as such, that is, to identify products or services. This is often referred to as using the trade name as an adjective, as opposed to a noun.

Let’s say, your company is called Awesome Software Inc. and you make software. If you phrase your marketing materials to say that “Awesome Software Inc. offers such great titles as Text, Calculator and Presentations”, you are using “Awesome Software” as a trade name. If you phrase them to say “We offer Awesome Software™ Text, Awesome Software™ Calculator and Awesome Software™ Presentations”, then you are using “Awesome Software” as a trademark.

The classic example is, of course, Microsoft® Windows®. We don’t buy Microsoft, we buy from Microsoft. But because “Microsoft” is a part of the name of the product we buy (and part of the reason why we buy it), it is also protected as a trademark in its own standing.

If you believe that a substantial number of your customers are attracted to your business because of your trade name, you should consider using the trade name as a trademark and getting it registered as a trademark.

In other words, if you consider your trade name a factor that gives you a competitive advantage, you should not rely merely on registration of the company name with the Registrar of companies. You should accord the asset that you care about the protection that it deserves, and the only way to do it is through registering it as a trademark.

CIPO offers a very sophisticated trademarks search on its website.

Unfortunately, as with most government websites, the interface is less than user-friendly.

This is why I created my own script that allows you to search for registered trademarks and trademark applications and displays information in a much more visually pleasing way.

Unfortunately, because of how CIPO’s database is designed, my search can only be used for the basic search, not the advanced search.

Feel free to use it. And if you do – please don’t forget to tweet about it!