Canadian Trade-mark Law/Trade-marks

A trade-mark is a distinctive sign of some kind which is used by a business to identify itself and its products and services to consumers, and to set the business and its products or services apart from those of other businesses. Conventionally, a trade-mark comprises a name, word, phrase, logo, symbol, design, image, characters, logo, a domain name, a colour applied to a surface or a combination of one or more of these elements. There is also a range of non-conventional trade-marks which do not fall into these standard categories.

The function of a trade-mark is to serve as an exclusive identifier of the source or origin of a product or service. "Because the purpose of a trade-mark is to distinguish the wares/services of a person by associating the wares/services with a single source, the trade-mark must be distinctive and remain distinctive of the single source."(p 2-1. Odutola on Canadian Trade-mark Practice)

Section 2 of the Trade-marks Act defines a "trade-mark" as

(a) a mark that is used by a person for the purpose of distinguishing or so as to distinguish wares or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others,
(b) a certification mark,
(c) a distinguishing guise, or
(d) a proposed trade-mark;

Section 2 of the Trade-marks Act defines "certification mark" as

a mark that is used for the purpose of distinguishing or so as to distinguish wares or services that are of a defined standard with respect to
(a) the character or quality of the wares or services,
(b) the working conditions under which the wares have been produced or the services performed,
(c) the class of persons by whom the wares have been produced or the services performed, or
(d) the area within which the wares have been produced or the services performed,
from wares or services that are not of that defined standard;"

Section 2 of the Trade-marks Act defines a "distinguishing guise" as

(a) a shaping of wares or their containers, or
(b) a mode of wrapping or packaging wares

the appearance of which is used by a person for the purpose of distinguishing or so as to distinguish wares or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others;

Section 2 of the Trade-marks Act defines a "proposed trade-mark" as

"proposed trade-mark" means a mark that is proposed to be used by a person for the purpose of distinguishing or so as to distinguish wares or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others;

Use

A trade-mark owner seeks to enforce their rights or interests in a trade-mark by preventing unauthorised trade-mark use. For a trade-mark to be in "use" it must have public "impact". As such internal company documents, such as letterhead, memos, reports, etc. are not sufficient unless they are used in outside correspondence.

Section 4 of the Act determines when a mark has been "used" in relation to wares or services:

4. (1) A trade-mark is deemed to be used in association with wares if, at the time of the transfer of the property in or possession of the wares, in the normal course of trade, it is marked on the wares themselves or on the packages in which they are distributed or it is in any other manner so associated with the wares that notice of the association is then given to the person to whom the property or possession is transferred.

(2) A trade-mark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services.

(3) A trade-mark that is marked in Canada on wares or on the packages in which they are contained is, when the wares are exported from Canada, deemed to be used in Canada in association with those wares.

A mark for a ware is deemed "in use" if the product or packaging in labelled at the time of sale or if they are labelled at time they are exported out of the country. A mark for a service is deemed in use if it is displayed at the time of performance or in an advertisement.