A company's trade-marks are valuable assets. Care should be taken to ensure they are properly protected by registration under the Trade-marks Act.

There are a substantial number of benefits to registering your trade-mark.

A valid registration gives the owner of a trade-mark the exclusive right to use the trade-mark throughout Canada, as opposed to being limited to a specific geographical area.

The presence of a trade-mark registration on the public record can serve as a powerful means to deter others from adopting a similar trade-mark.

A trade-mark is a business asset which may be licensed or which may be sold with or without the goodwill in the trade-mark. Moreover, proper protection of a company's goodwill through registration of that company's trade-mark(s) can enhance a company's value and ensure that a company's value is more easily recognized by a potential purchaser.

The owner of a valid trade-mark registration may bring an action in any court of competent jurisdiction in Canada to prevent depreciating the goodwill in its trade-mark. The owner of a common-law trade-mark has no such remedy.

Registration provides owners additional grounds for opposing trade-mark applications in the hands of others.

Registration of a trade-mark in Canada provides the owner with a basis to apply for registration of the trade-mark in other countries.

A trade-mark application in Canada may be filed on any one or more of the following bases.

The trade-mark has been used in Canada.

If the trade-mark has been used in Canada as of the filing date of an application for registration in the Canadian Intellectual Property Office, the applicant should base the application on use in Canada. Use of a trade-mark in association with wares is defined by Section 4(1) and (3) of the Trade-marks Act which read as follows:

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 such 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.

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

The date of use of a trade-mark in association with wares is the date a purchaser in Canada receives the wares in the normal course of trade and the trade-mark appears on a package, label, or tag used in conjunction with the wares. If the product is a bulk product, the association will be less direct.

Use of a trade-mark in association with services is defined by Section 4(2) of the Trade-marks Act which reads as follows:

4. (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 such services.

If a trade-mark is advertised in Canada in association with the services, this constitutes a use of the trade-mark in relation to the services.

The trade-mark has been made known in Canada.

The requirements for making the trade-mark known in Canada are that it must have been used by the applicant, or his predecessor in title, in a country of the Union other than Canada and made well known in Canada by reasons of the distribution of wares or services or the advertisement of the wares or such services in publications or radio or television broadcasts.

In many cases, it may be difficult to determine whether a trade-mark has been made known in Canada. If an alternative basis for registration is available, it may be desirable to bring it into the application in addition to the basis of making known, or omit the basis of making known altogether.

The trade-mark has been registered and used abroad.

In order to obtain a registration on this basis, the trade-mark must have been registered by the applicant or his predecessor in title in his country of origin and used in association with the wares or services claimed in the application in a country of the world other than Canada. An application may be filed in Canada under this procedure if there is a corresponding application in the country of origin of the applicant or his predecessor in title and use of the trade-mark has been made in the manner described. The Canadian Certificate of Registration will not be issued until a certified copy of a foreign registration is filed in the Canadian Trade-marks Office.

The applicant intends to use the trade-mark in Canada in association with wares and/or services.

An application may be filed on this basis at any time and will be prosecuted in the Trade-marks Office up to point of allowance. Once the application has been allowed, the applicant will have three years from the filing date of the application to file evidence that the trade-mark is in use in Canada. The term for filing evidence of use is extendable in six month increments. A Certificate of Registration will not be issued by the Trade-marks Office until an affidavit or declaration is filed confirming that sales of the product or advertising of the service have taken place in Canada.