Obtaining a trademark registration provides several benefits for businesses. Trademark registrations can help protect your rights and serve as assets that may be leveraged through licensing or used as collateral. However, obtaining a trademark registration in multiple jurisdictions can be a costly endeavour, and it can be difficult to prioritize where and when to seek registration to maximize protection.
In this edition of our Trademarks for Businesses series, we will discuss key considerations for determining what trademark to register and where.
What to register
Businesses often have more than one trademark associated with their brand. For example, most businesses have, at least, a brand name and an accompanying logo, which may incorporate a stylised version of the brand name with or without a design element.
A registration of a brand name (i.e., a word mark) protects the word(s) without any claim to a particular colour, design, font, shape, size, or typeface. A registration of a brand name often offers the most flexibility should a business’s branding evolve over time.
A registration of a logo (i.e., a design mark) protects the brand name together with any design elements. In some countries, design marks can be registered in black and white (which covers all colours and combinations of colours) or in colour (which protects only the specific colours claimed in the registration).
Registering all three (i.e., brand name and logo, both with and without specific colours) often provides the broadest protection as the registrations individually protect the word, design and colour elements of a business’ logo. However, businesses wishing to minimize costs should consider the distinctiveness and individual uniqueness of their brand name, logo and colour schemes when prioritizing what to register.
For example, obtaining a trademark registration for a brand name may be practical where the brand name is striking and unique. Registering a logo without colours may be practical where the logo features distinctive design elements. On the other hand, registering a logo in colour may be practical where the colour combination is so unique or unusual as to render the coloured logo worthy of protection.
These same considerations also apply to non-traditional trademarks.
Businesses may also prioritize marks based on commercial significance.
A primary mark (or house mark) is a company’s most important mark. It usually appears on all products and is associated with all services. In comparison, secondary marks (which may designate distinct product/service lines), tertiary marks (which may designate a particular flavour, model, style or variety within a product line) and quaternary marks (which are suggestive of the products or services) may be a lower priority to a business, depending on its budgetary constraints. Businesses may consider whether to register the latter marks only in key jurisdictions (if at all).
Where to seek registration
Because trademark registrations are generally geographically limited to the issuing country or region, businesses operating in multiple jurisdictions (or with plans for future expansion) should consider where their marks are or will be used along with the actual or expected revenue in each jurisdiction. These considerations will help to determine which jurisdiction(s) to prioritize.
Business owners should also consider the legal systems, benefits and requirements of each country or region. For example, some countries, like the U.S., generally require that the business's goods and/or services are sold and/or performed in association with the mark before granting a trademark registration.
In Canada, a trademark registration grants its owner the exclusive right to use the mark across Canada with the goods and/or services covered by the registration. It is not necessary to provide evidence of use to obtain a registration in Canada.
Other important considerations include the delay for obtaining a registration in each country or region of interest.
When to seek registration
The timeline from filing to registration ranges from jurisdiction to jurisdiction and can be anywhere from a few months to a few years. Moreover, in many countries, a registration can become vulnerable to cancellation for non-use after a certain period of time (usually 3 or 5 years after registration).
For this reason, a trademark that its owner intends to use for only a short period of time (for e.g., for a temporary campaign or promotion) may not be worthy of registration if the registration will issue only after use of the mark has ceased.
How to seek registration
Businesses may consider registering their trademarks nationally (in each individual country or region in which they are using, or plan to use, the mark), regionally (through regional trademark systems, such as the European Union, which covers 27 countries through a single application), or internationally through the Madrid International Filing System (which allows business owners to seek protection in over 100 jurisdictions with a single application).
Each system has its own advantages and disadvantages with respect to costs, flexibility and timing. For example, national filings are often the fastest route to registration and offer the greatest flexibility; however, these filings can be the costliest. In comparison, international applications filed through the Madrid International Filing System may be more cost-efficient for businesses who require protection in five or more member jurisdictions.
Business owners are advised to seek the advice of local IP counsel to develop a trademark filing strategy. IP counsel can help business owners determine how to best and most cost-effectively protect their marks in each country or region of interest.
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