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Trade-marks are a central element in the branding and marketing strategy of any business. But what exactly is a trade-mark? For all the legal experts, it is obvious. But it can still remain a problem to explain it to a client who finds it difficult to distinguish between a trade-mark, a trade name and a corporate name.

A trade-mark is a "sign" that distinguishes the goods or services produced or provided by one business from those of other businesses. This "sign" can be made of words, letters, numerals, drawings, pictures or any distinctive combination thereof. It can also be made of one or more colors, three-dimensional shapes, sounds or smells.

The main purpose of a trade-mark is to identify and distinguish a product or a service from all other similar products or services. Trade-marks play a pivotal role in the marketing strategies of companies. They contribute to define the image, the reputation and the channels of the company’s products in the minds of the consumers. They represent the keystone of any company’s goodwill. The very ownership of a trade-mark with a positive image and reputation go way beyond their immediate meaning and provide its owner with a strong competitive edge.

Trade-marks can also be an asset with its own value that can generate income through licensing. For example, Harley-Davidson® is a famous trade-mark worldwide for motorcycles. It also generates a substantial income for the company through licensing the trade-mark for various items such as clothing, glassware, jewelry and many others. And the same can be said about Disney® characters.

Although your clients may not own such famous trade-marks, it is important for them to protect the trade-marks in which they invest substantial amounts of money.

Canada is one of the countries that grant protection to a trade-mark through use. So it is important to advise your clients to use their trade-marks, and to keep a record of such use, by keeping archives of invoices, packaging, and advertising. Your clients should also be made aware of the additional protection that registration of their trade-mark offers. While registration is not compulsory in Canada, it remains highly advisable for the strong protection it provides, particularly in case of conflict with an identical or confusingly similar trade-mark.

Many people believe that incorporating their business and/or registering their trade name or business name with the Inspector General will automatically grant them protection as a trade-mark. This is a common misperception and it is important for you to explain to them the difference between trade or business names and trade-marks.

Sections 7, 9, 10, 11 and 12 of the Trade Marks Act specify numerous cases of prohibitions of registration of trade-marks. Section 6 deals with confusing trade-marks. It provides guidelines to identify confusion or likelihood of confusion between trade-marks that are similar.

In practice, only a thorough search can help you determine if a proposed trade-mark could be confusing with another trade-mark or trade name. This is why the expert analyst at Marque d’Or have developed a trade-mark search system that provides you with the information you need to properly advise your clients on trade-mark registration issues. As indicated in the chart below, various degrees of search are offered to suit your needs in each particular case.