You’ve started your business, and you’ve come up with a catchy and recognizable name. As luck would have it, the domain name was available and now you have your very own website with the name of your business. The job is done, and the name is yours now, right? Not quite.
Name protections in Canada and Ontario do not end with a domain name registration and owning a domain does not mean that you own a name or have the absolute right to use it or prevent others from using it. Ownership of a domain is just that, it offers no protection of the name itself.
Conceptually, the levels of protection from lowest to highest can be thought of as follows: Provincial Business Name Registration, Provincial Incorporation, Federal Corporations, Unregistered Trademarks and Registered Trademarks.
Provincial Business Name Registration and Incorporation
When you carry on business in Ontario or Canada, under a name that is different than your own, you are required to register that name. This process requires obtaining a name search which will reveal if there are any identical or similar names in use within the Province.
The Province will generally prevent you from registering a name where there is an existing business name, corporate name, or trademark, that is identical or confusingly similar. However, a name that is similar or even identical, may be allowed where it is deemed that there is no significant risk of confusion between the businesses.
Registering or incorporating a name provides you with the freedom to use the name within the Province, this freedom is different from having exclusive rights to prevent others from using a name. Further, if your business expands to another province, you must go through the process again in the new jurisdiction to secure the right to use the name in that province or territory.
Federal Corporations
Incorporating and registered a name federally provides a slightly elevated protection and prevents the need to re-search the name in different provinces. Reserving a name at this level, secures the right to use the name across the country.
Trademarks – Unregistered and Registered
It is important to recognize that registering a business name or incorporating either federally or provincially does not provide trademark protection or the exclusive right to use the name. A trademark can protect a range of things including letters, words, designs, symbols, that are used to distinguish your goods and services from those of others.
There are two levels of trademark protection in Canada – unregistered and registered.
This means that you do not need to register trademarks in Canada, however registering your trademark helps to establish ownership and validity and can be easier to protect. Registering a trademark provides you with the exclusive right to use the trademark in Canada for 10 years, provides more enforcement options against those that misuse your trademark and protects the value of the trademark.
To protect an unregistered trademark against misuse the owner must prove:
– that there is sufficient goodwill and reputation attached to mark in association with the goods and services;
– another trader deceived the consumer through misrepresentation; and
– the owner suffered actual or potential damages.
Understanding that registering trademarks can be an expensive and lengthy process there are a number of strategies that can be employed short of registering a trademark, such as using the “tm” symbols with your trademark to indicate ownership and potentially deter others from using it, securing social media accounts with identical or similar names, and monitoring the markets for any misuse of your name. One of the most important steps is to ensure that you are actively using your trademark in connection with your business.
More information? We’re here to help – [email protected] This WARDS LAWYERS PC publication is for general information only. It is not legal advice, nor is it intended to be. Specific or more information may be necessary before advice could be provided for your particular circumstances.
