As more and more companies are seeking to distinguish their products and services in the marketplace by registering their names, slogans or designs as trade-marks, many companies which do not retain a Canadian lawyer or trade-mark agent often make fundamental mistakes. Among the most common mistakes are the following.

1. A Company Name is not a Trade-mark.

A company name is the legal name under which a company carries on business. However, unless the company name is used as a trade-mark, it cannot be registered under the Canadian Trade-marks Act. For example:

• Acme Insurance Ltd. markets life insurance under "Goodlife Insurance". "Acme Insurance Ltd." is the company name, "GoodLife Insurance" the trade-mark. "Acme Insurance Ltd." is not used as a trade-mark, "GoodLife Insurance" is.

• Acme Insurance Ltd. markets life insurance under "Acme Life". "Acme" is part of its company name, but it is also used as a trade-mark to distinguish its insurance policies from those of other insurance providers.

The important point here is that the registration of a company and the registration a trade-mark are two distinct processes. Federal and provincial company offices do not search the Trade-marks Office database to determine if a proposed company name is a registered trade-mark; nor does the Trade-marks Office search federal and provincial company offices to determine if a proposed trade-mark is registered as a company name. The two processes are unrelated, and the trade-mark must be registered separately.

2. There’s no Requirement to use a Trade-mark before Registering.

Many companies believe that they must commence use of their trade-mark before registering it. In Canada, as in many other countries, trade-marks may be filed on the basis of "intention to use". An application which is filed on this basis must specify the products and services that the company intends to use in association with the trade-mark. Once the application has been filed, the company generally has three (3) years from the date of filing to file a Declaration of Use confirming the use of the trade-mark in association with the specified wares and services. The Declaration of Use may be filed anytime within the three (3) year period, but must not include any products and services that have not been used in association with the trade-mark.

3. Search before Using a Trade-mark.

It is always advisable to conduct a trade-mark search before commencing use of a trade-mark. This will ensure that the trade-mark does not infringe another trade-mark and will avoid the wasted expense of such things as advertising and labeling.

A trade-mark search may be conducted through the Canadian Intellectual Property Office Trade-marks database by inserting the trade-mark in the search text box and selecting the appropriate search field. If the search does not reveal an exact match, a secondary search should be conducted based on such factors as the elements of the trade-mark (where, for example, the trade-mark comprises more than one word), different spellings of the word(s) comprising the trade-mark and the sound of the trade-mark. This is referred to as a "comprehensive search" and is advisable to ensure that the trade-mark is not confusing with a registered trade-mark and therefore unregistrable.

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