Societies have significant goodwill tied up in their names, brands, and initiatives. Many take the step of registering a trademark to ensure their unique brand remains their own. Others obtain certification marks, in an effort to provide some oversight to certain industries. This post provides an overview of the Canadian trademark registration process and costs.
Registration of a trademark is a process that any society which holds marks, used in association with goods or services, should undertake. Protection of one’s society name, initiatives, or other brands, is important to differentiate the non-profit in the marketplace to potential donors, volunteers, and members of the public.
BENEFITS OF REGISTRATION
In general, a registered trademark grants the exclusive entitlement to use the mark for a period of 15 years, subject to renewals. It also gives statutory protections not available at common-law. There is no need to prove good will in the mark or ownership if the need arises to enforce it, due to its registration. If the mark is used without permission that lessens the goodwill in the mark, additional statutory protections are available. Further, a registered mark can be used for licensing, as the registration of the mark gives easier access to legal protections for licensees.
Examples of non-profits and charities with registered marks include:
- Habitat for Humanity registered “HABITAT FOR HUMANITY”; “RESTORE”; and other such associated marks and logos;
- The Vancouver Aquarium registered its logo, the fish-mark on its own, “THE GREAT CANADIAN SHORELINE CLEANUP” and of course, “OCEAN WISE”; and
- The Downtown Vancouver Business Improvement Association has registered “DOWNTOWN AMBASSADORS”.
On occasion, non-profits will license their marks to others in an attempt to monetize their social capital. The “OCEAN WISE” program, which allows use of the OCEAN WISE mark on packaging or other materials if the seafood is deemed sustainable, is a great example of this.
It is also possible for to register a certification mark, a special kind of mark which sets a defined standard, with respect to the character of quality, conditions of manufacture or provision, the class of persons who produced or provided the services, and the geographic area. Non-profits and charities often use these as part of their purposes or social-capital planning, extending use of the mark by license to other parties. Examples include “FAIR TRADE CERTIFIED” and “UNION MADE”.
REGISTRATION OF A MARK
Depending on the mark, a society may register it on its own. However, due to the possibility of confusion and the risk of opposition to mark registration, an intellectual property lawyer or a trademark agent should be consulted. A trademark agent is an individual certified by the Canadian Registrar of Trade-marks to be skilled in the area of trademark registration and opposition. An intellectual property lawyer can advise on the legal aspects of registration, and the law as it relates to confusion and infringement. Most intellectual property lawyers who register marks are also trademark agents.