Success in business may depend, to a large extent, on message conveyed and image projected. A product or service may be excellent, but if the supplier of the product or service does not stand out, it may be overlooked in favour of a company with a stronger market presence. Trademarks can provide that distinctive identity which differentiates a business' products or services with that of a competitor.

A trademark is a word, a symbol, a design or any combination thereof used in association with wares (products) or services. It is a useful tool for distinguishing the wares or services of one entity from those of others in the marketplace. A trademark may come to represent not only wares and services, but also the reputation of the provider of such wares and services. As such, a trademark may constitute valuable intellectual property.

The nature of the terms used as a trademark is extremely important from the standpoint of:

• initial registrability; and
• lasting viability as a trademark, since the trademark must be capable of distinguishing the wares or services in relation to which it is used.

In evaluating a trademark, there are four general categories of terms:

• distinctive terms;
• suggestive terms;
• descriptive terms; and
• generic terms.

Generally, the terms that are easiest to register and to protect as trademarks are "distinctive" terms. Distinctive terms are often arbitrary or fanciful terms. They are unmistakably capable of identifying an owner's wares or services without any likelihood of confusion, for the average consumer, with the wares or services of another party.

At the other end of the spectrum, "generic" terms will never be capable of registration. The meaning of a generic term is synonymous with the wares or services themselves (e.g., zipper, escalator, etc...). Generic terms are incapable of distinguishing the wares or services of one party from those of another.

Between these two extremes lie "suggestive" and "descriptive" terms.

A "suggestive" term is one that merely suggests the nature, quality or characteristic of the wares or services in relation to which it is used as a trademark. It is possible for suggestive terms to be registered as trademarks but they make for "weak" trademarks because they often do not provide their owner with the ability to prevent others from using marks which are very similar and used in relation to similar wares or services, or that are identical marks used in relation to different wares or services.

A "descriptive" term describes the nature, quality or characteristic, the intended purpose or function, or the end effect upon the user of the wares or services in relation to which it is used as a trademark. Descriptive terms are not registrable unless, over a period of years, the terms have acquired, in the minds of the public, a special, identifiable meaning (a "secondary meaning") which links the wares or services to the owner of the trademark.

When choosing a trademark, you should make every effort to use arbitrary and fanciful terms. Suggestive terms make for very weak trademarks and should be avoided whenever possible. Descriptive and generic terms should never be used as trademarks. Furthermore, terms which have a specific meaning within a particular industry should be avoided in relation to wares or services pertaining to that industry as they tend to make the trademark suggestive or descriptive and therefore more difficult to register and to protect.

Generally, unless the trademark of a party has become clearly distinctive of a given party's wares or services, a trademark will not be registrable in Canada if it is:

• the name or surname of a person (e.g., "Jane Smith");
• clearly descriptive of the wares or services in relation to which it is used (e.g., "Perfectly Clean" in relation to dry-cleaning services);
• a word in another language which describes the wares or services (e.g., "Gelato" - the Italian term for "ice cream" - in relation to ice cream products);
• deceptively mis-descriptive (e.g., "Air Courier" in relation to ground transportation services); or
• an official symbol, coat of arms, badge, crest, emblem or name (e.g., the Canadian flag, the letters "R.C.M.P.", the name "United Nations", the symbol of the Red Cross).

To maximize the likelihood of registration, a trademark should therefore be either an invented mark or one that makes only oblique reference to the nature of the wares or services in relation to which it is to be used.

It should be noted that, even where a chosen trademark is not registrable for being clearly descriptive or deceptively mis-descriptive, it is possible to continue using that trademark but its owner must understand that it will not be able to enforce the exclusivity that would result from registration of the trademark.

Where a chosen trademark is a "design mark" (i.e., consists of words in combination with a design), the owner may wish to consider registering the words and the design separately. Separate registrations of the various components of the trademark give maximum protection to the trademark owner and allow for greater versatility of use of the mark in association with the trademark owner's wares and services.

Registration is proof of ownership and therefore a key way of protecting a trademark from misuse and imitation. Registration is not obligatory but is highly recommended because it is a way of verifying the exclusive right that is established through using the trademark in relation to specific wares or services. In a dispute, a registered owner does not have to prove ownership; the onus is on the challenger. The risk in using an unregistered trademark is the greater likelihood of time-consuming and expensive legal proceedings in the case of a dispute, as well as the lack of national, exclusive protection of your trademark.

It is important to realize that, while registration affords the greatest possible legal protection against infringement or misuse of a trademark, it is, and can never be, a failsafe guarantee against all problems relating to trademark usage. For example, specific circumstances make it possible for a trademark to be expunged (removed) from the register on the basis of prior use of a confusing mark by another party.

Furthermore, registering a trademark with the Canadian Trademarks Office protects rights in that trademark in Canada only. Where an entity is providing wares or services in association with a given trademark in other countries, registration in each of such other countries should be considered.

In Canada, registration of a trademark consists of having the trademark entered on the Trademarks Register of the Trademarks Office of the Canadian Intellectual Property Office of Industry Canada. The entire process takes approximately eight to ten (8-10) months, unless there are opposition proceedings, in which case the process can be much longer.

In Canada, a trademark is registered by filing an application with the Trademarks Office together with a non-refundable fee of two hundred and fifty dollars ($250.00) for each trademark applied for. While it is possible to file an application for registration of a trademark that is not yet in use somewhere in Canada, the trademark must be in use in Canada before actual registration can occur.

An application for registration of a trademark must include a detailed description, in normal commercial terms, of the wares or services in relation to which the trademark is used. Within a couple of weeks of receiving an application for registration of a trademark, the Trademarks Office will issue a confirmation of receipt of the application.

Within the following month or two, the Trademarks Office examiners then carry out a search of trademark records for potentially conflicting marks. Should there be no apparent conflict, the examiners then make an initial determination as to the registrability of the trademark, assessing such characteristics as whether the trademark is "clearly descriptive" or "deceptively mis-descriptive". They will also decide whether the description of the wares or services complies with the regulations and is in normal commercial terms. The examiners advise the applicant of any adverse findings.

Once past the conflict search stage and initial determination of registrability, the trademark information is published in the Trademarks Journal. Any interested party may then make representations to the Trademarks Office, such as filing an opposition against registration of the trademark owing to alleged confusion with an existing mark. Should this happen, opposition proceedings can, if successful, bring the application process to an end or otherwise delay the registration process for eighteen (18) months or more.

If the Trademarks Office receives no objection within approximately three (3) months of publication in the Trademarks Journal, the Trademarks Office issues a notice of allowance of the application for registration.

TTo proceed to the final step of registration, a fee of two hundred dollars ($200.00) per trademark must be paid by the applicant within six (6) months of the date of the notice of allowance. Upon receipt of the registration fees, the Trademarks Office will issue a certificate of registration for each duly registered trademark.

Although not required by law to do so, trademark owners often indicate ownership or registration of their trademark through certain symbols, namely "^TM" (trademark) or "®" (registered trademark). The "^TM" symbol can be used with a trademark regardless of whether it is registered, as long as it is being used in association with wares or services. The "®" symbol, however, may only be used once the trademark is registered.

In Canada, registration of a trademark is valid for fifteen (15) years. A trademark registration is renewable every fifteen (15) years upon payment of a renewal fee.

Government fees currently consist of a $250.00 non-refundable application fee for each trademark applied for and, if the application is successful, a $200.00 registration fee.

Canadian trademark law recognizes two types of trademarks, “word marks” and “design marks”. As their name implies, word marks consist of a word or a series of letter and words, while design marks are made up of an image/design/logo which may or may not contain words. While there may be overlap, they are considered to be two separate trademark applications. A word mark generally provides the broadest coverage, and prevents others from using the same name. A design mark prohibits others from using a logo containing similar design elements that may be confusing to potential customers purchasing similar products. Applying for both a word mark and a design mark provides the best possible protection and is often recommended by trademark agents if the applicant desires to best protect their intellectual property.