Registered trademarks vs. unregistered trademarks

What is a trademark?

Trademarks are used to prevent copycats, infringements, and counterfeiting. Think of it as staking your territory. They help customers distinguish your products or services from others in the marketplace, associating them with your company’s brand and reputation.

Although it’s not required by law, trademark owners often indicate ownership or registration of their trademark through certain symbols such as  (trademark) or ® (registered trademark).

The ™ symbol can be used with a trademark regardless of whether it’s registered or not.

The ® symbol may only be used once a trademark is legally registered.

Registered trademarks

Registered trademarks can include words, designs, combinations of words and designs, and distinctive shapes or wrappings for your offerings. Your business or trade name may also be a registered mark if it’s used to distinguish your products and services from others. Taking this step can curb imitation and misuse, preventing others from capitalizing on your intellectual property.

Trademarks are registered under the Canadian Trade-marks Act. Once the application and registration processes have been completed, a registered trademark owner has the exclusive right to use his or her trademark across Canada in association with the goods and services specified in the registration for 15 years (renewable).

Registration can be a complex process. Companies, individuals, partnerships, trade unions, or lawful associations may file for trademark registration provided they meet the requirements of the Act. An experienced agent can save you time and money by avoiding pitfalls such as poorly prepared applications and improper research. Applying on your own could cost as little as $350, while hiring lawyers or agencies could inch closer to $2000 or more.

Unregistered trademarks

Unregistered trademark rights (or non-registered trademark rights) are governed by common law rather than the statutory Trade-marks Act. Protection is considered by region and is not automatically Canada-wide.

The owner of an unregistered trademark may prevent competitors from using the same or similar trademark in connection with the same or similar products or services. Although there are no upfront costs associated with having unregistered trademark rights, those rights are only granted once it has gained sufficient goodwill or reputation over a stretch of time. Efforts to enforce an unregistered trademark are often more costly and time consuming than those of registered trademarks. With each suspected violation, owners have the burden of proving their own historical reputation, the competitor’s intended consumer deceit, and all incurred damages.

It’s also important to remember that unregistered trademarks are not included in the official database. Without these records, it’s possible that another company may be approved to register a trademark that you have unofficially claimed as your own.

Trademarks and brand design

Fetching Finn guarantees that the custom brand designs and collateral we provide do not infringe on any rights or third party ownership.

All rights are fully transferred to our clients upon project completion. It’s each client’s responsibility to perform due diligence on any business or service name they intend to use or potentially trademark. They must also agree to only provide supporting materials that they have rights or consent to use.

Here are a few examples of branding projects gone wrong as a result of trademark violation:

A client’s business name was very similar to an existing business name in the same area. We completed a full brand, website build, and print collateral design for the client’s new office. It was a few years before their disgruntled competitor decided to take legal action. As a result, our client had to re-establish their reputation and trust under a new name, also incurring re-branding expenses.

. . .

After branding with us, a client decided to self-assign their company a mascot using the name and character likeness of a world-famous cartoon brand. They found a designer willing to accept the risk of illegally re-creating the figure for a large format vehicle graphic. The result? An immediate cease and desist order from overseas that could have resulted in life-altering fines.

. . .

We’re often asked to include logos of a client’s suppliers or associations on websites or print collateral. To quickly provide us with artwork, they copy logos from the internet without the owner’s consent (or tell us to). Not only is this illegal, but the low-resolution quality is often a poor representation of the original brand. Nobody wants their logo stolen and re-purposed without permission! Materials that are provided to us in obvious violation of the law are refused, much to our clients’ frustration…but we’re sticklers for doing the right thing.

The information contained in this article is not to be substituted for official legal counsel.

Nikki Takahashi

Nikki Takahashi is a brand designer and strategist who has helped over 300 entrepreneurs embrace and amplify what makes them unique. Nikki is founder and CEO of Fetching Finn Inc. and host of Square Peg Entrepreneur, a podcast featuring industry disruptors and mavericks in business.