October 2017
PFD | Intellectual property
Choosing a trademark

More than just a marketing concern

By Josée Tourangeau Lawyer

To achieve its full value, a trademark must stand as an indicator of a single source for a product or service, in addition to being appealing. Before choosing a trademark - a name, logo or any other sign - to promote your products or service, there are several aspects to consider.

In Canada, it is always best to register a trademark for maximum legal protection. However, certain trademarks are not registrable under the Trade-Marks Act.

Here are five key aspects to consider when choosing a Canadian trademark.

  1. Originality

Ideally, a trademark should be short and easy to read, spell and pronounce so that it is easy to remember. It is better to choose a trademark that is fabricated or invented rather than rely on terms in everyday speech. The courts are likely to attribute greater protection to a unique and original trademark.

  1. Without negative connotation

A trademark that includes negative slang could tarnish the image and reputation of your business. Trademarks that are a device or a word that is scandalous, obscene or immoral are prohibited in Canada.

  1. Non-generic term

A trademark cannot be solely constituted of a generic term: one that makes up the name of the commercialized product or service in any language. For example, a business could not choose PATIO FURNITURE for its online patio furniture sales. A hammer manufacturer could not use MARTILLO as its trademark since martillo is the Spanish word for hammer.

  1. Non-clearly descriptive or false and misleading term

A trademark should not include a term or design mark that provides an unclear, false or misleading description of the nature or quality of the products or services, the conditions under which they are produced, the individuals that produce them or their place of origin. This also applies to word sequences such as slogans. Still, it is important to note that suggestive marks that refer to features of a product or service without providing a clear description are considered registrable.

  1. Non-confusing

A trademark should not lead to confusion with a previously registered mark, a mark that is pending registration or a mark or trade name (including a company name) used by a third party. To avoid confusion, it is best not to choose a mark that is identical or similar in appearance or sound to a competitor's or to one belonging to an organization in a related business sector. A trademark creates confusion with another trademark or trade name when the use of both in the same region could lead an ordinary consumer to conclude, as a first impression, that the products or services provided under the mark originate from the same source or from a related business.

These are only certain aspects to take into account since the Trade-Mark Act also stipulates other restrictions that must be considered when choosing a trademark.

Err on the side of caution

It is always best to research a new trademark before using it to market products or services. While it is always possible to change a trademark, the transition process can prove difficult and costly for businesses that have already invested considerable sums to promote the trademark they initially chose. Preliminary research also constitutes a highly useful tool to identify potential sources of confusion.

For more detailed information on trademarks and guidance in choosing a trademark, do not hesitate to contact one of the experts in our firm.