Before applying to register a trademark in Canada, there are a number of questions that should be considered. With which goods and/or services will I use my trademark? Who are my target customers? How will I sell my goods and/or services to them? Such questions should be answered before an application for a Canadian trademark registration is filed with the Canadian Intellectual Property Office. But perhaps the most important question of all is: What should the trademark look like?
In Canada, a trademark registration can cover one of four types of trademarks:
- an ordinary mark consisting of a word (or words), a design, or a combination of these;
- a mark consisting of sounds;
- a certification mark to identify goods or services that meet a defined standard; and
- a distinguishing guise (such as the shapes of goods, their containers and modes of wrapping or packaging goods).
Ordinary marks, consisting of one or more words, a design, or a combination of these, are the most common type of trademark in Canada and are the subject of this article.
Ordinary marks include “design marks” and “word marks.” A design mark consists of a “design element” – such as a logo, a picture or a stylized typeface – and, oftentimes, one or more words. A word mark contains one or more words but lacks any design element.
Below are just a few examples of design marks and word marks.
There are advantages and disadvantages to design marks and word marks, which must be kept in mind when answering that all-important question of what the trademark should look like. A number of important considerations – some favouring design marks, others favouring word marks – are set forth below.
Distinctiveness and customer recognition. Picture a well-known label, slogan or sign that contains both a design element and a word or two. Which element stands out more distinctively in your memory? For many people, a design offers easy and immediate recognition of the source of the goods or services – even from a distance or with only a quick glance – before the accompanying words can be read. Thus, while some words, such as coined words, can be distinctive in their own right, design marks are as a general rule more distinctive than word marks.
Advantage: design marks.
Ease of registration. Since design marks are naturally more distinctive than word marks, they may be easier to register with the Trademarks Office. In view of a design mark’s unique design element, an Examiner is generally less likely to consider it clearly descriptive of the goods and/or services in association with which it is used or confusing with a registered trademark.
Conversely, the Examiner is generally more likely to reject a word mark as impermissibly being “primarily merely” the name or the surname of an individual, clearly descriptive of the goods and/or services in association with which it is used, or confusing with a registered trademark. Moreover, the Canadian Trademarks Register contains more word marks than design marks, so the applicant seeking to register a word mark is all the more likely to encounter an objection to the registration of a word mark by the Examiner.
Advantage: design marks.
Concurrent copyright protection. The unique design element of a design mark is an artistic creation and, as such, is subject to copyright. A design mark may therefore be protected not only by trademark law but also by copyright law. Such concurrent protection may allow an owner to pursue infringers under two causes of action: trademark infringement and copyright infringement. While some word marks (such as those that consist of or contain coined words) may also be protected by copyright law, design marks are almost always so protected.
Advantage: design marks.
Ease of policing. Simply because a design mark includes a unique design element that lends the mark its content and “punch,” it may be easier to detect and police the unauthorized use of the mark. Prominent design marks may catch the eye more easily than word marks and may more easily lead investigators to track down counterfeit goods.
Advantage: design marks.
Permissible variations of the mark. Under Canada’s Trademarks Act, a registered trademark is deemed to be “used” when the trademark (as it appears on the register) is used in association with the goods and/or services that are listed on the relevant registration. The registered owner who decides to use a variation of its design mark – rather than the mark as it appears on the register – is playing with fire because such use may lead to a finding of “non-use,” which may in turn lead to the loss of trademark rights. By contrast, the registered owner of a word mark is entitled to use the words that make up the mark in any colour, form, shape, size or style.
In order to avoid a finding of non-use and the subsequent loss of trademark rights, the cautious owner should register each variation of its design mark that it plans to use before using it.
Advantage: word marks.
Cost and durability. A design mark includes a unique design element that costs time and money to create. It is not unusual for a corporation to spend hundreds of thousands – if not millions – of dollars in hiring artists and consultants to create and curate a corporate image that conveys to its target customers and the world at large its mission, personality and values through design marks. Those marks (and any future variations thereof) ought to be registered.
Conversely, the registered owner of a word mark need not register any colour, form, shape, size or style variation of its mark before using it because the registration is not bound to any one of those parameters. A single registration of a word mark, then, may help to reduce the costs of rebranding in the future.
Thus, the applicant who has not yet established its mission, personality and values is wise to apply to register a word mark, which affords its owner the freedom to alter the colour, form, shape, size or style of the mark at any time to fit the occasion. As consistent as it is durable, a word mark is an ideal solution for start-ups that do not yet have a logo but do have a brand name. And because a word mark is not registered to appear in any one colour, form, shape, size or style, its owner need not register any variations thereof before, during or after rebranding.
Advantage: word marks.
In conclusion, whether applying to register a design mark or a word mark (or both), it is important to remember that each has its advantages and disadvantages. Several factors, such as the nature of the goods and/or services, the nature of the business and channels of trade, and the target customers, will likely impact the appearance of the trademark. A trademark agent or lawyer may help choose a mark, prepare an application therefor, and defend the application along the way to registration.
The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.