Learn More about the Law

Trade-marks/Copyright

Question:

I use a name and logo in connection with my business that has really "caught on". Should I register it as a trade-mark? If so, why?

Answer:

A trade-mark is actually the name of a product or service. For example: "Pepsi™", "Microsoft™" and "Dan D. Apple™". Dan D. Apple™ was one of the first trade-marks registered by our firm on behalf of the Nova Scotia Fruit Growers Association for the Annapolis Valley Apple Blossom Festival. Under the law, it is not absolutely necessary to register a trade-mark at the trade-mark office in Ottawa; but read on.

Even if Dan D. Apple™ was not a registered trade-mark, the Festival would still have certain rights with respect to the image. Nevertheless, there are specific advantages to registering your trade-mark. Some examples include:

1) you can retain exclusive use of the trade-mark;

2) if another business or organization uses a trade-mark which is similar or identical to your registered trade-mark, the fact that you registered the mark entitles you to maintain a legal action against that person recuperating all damages or loss of customers. If you had not registered your mark, legal action would not be possible to obtain compensation for the loss of customers;

3) depending upon certain other criteria, your trade-mark will benefit from a priority of registration in Europe or the United States.

If it is important for you to have worldwide, North American or some other defined geographic area "nailed down", registration would have to take place in each of those jurisdictions. I doubt that you would find a country in which "Pepsi™" would not be registered under the relevant trade-mark legislation.

In short, if your trade-mark has "value", it is important that you register it so that there can be no doubt as to the time at which you began to use such a mark or logo (in other words, you have to be "first"). Also, you should define all of the products or services that you intend to use in association with your trade-mark or logo.

Once your trade-mark or logo has been registered, you must then be diligent in attacking any competing mark or logo which is copying or mimicking your logo or mark. A failure to challenge such uses puts your own mark in jeopardy.

Kentville, Nova Scotia, Canada
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