One often overlooked and misunderstood aspect of law is the distinction between a business name and trade-mark. The fact that a business name has been registered does not mean that you have the same rights and protections as you do with a trade-mark.
Many companies are dismayed to know that business name registration will not prevent competing companies from using the same or similar name, and that registration will not be an absolute defence in a trademark infringement case.
A business name registration does not provide adequate protection for a name, and, of course, does not protect the names of products sold by the business at all. A business name registration also does not protect images, slogans or logos used in connection with the name.
A trade-mark registration does provide these protections, and provides mechanisms to enforce your trade-mark.
The difference between the two is largely the result of the purposes of registration. The purpose of a business name registration is to provide information to the public about who it is doing business with, and to enable the public to find information about who is behind the public name. The purpose of a trade-mark registration is more specific, and is focused on assisting the business itself. It is aimed at granting and protecting the exclusive right to use that name throughout Canada.
Trade-mark registration for a business name is not absolutely necessary in all situations, although recommended. Much will depend upon the use of the business name. If the name is being used on product, or as the name of the product, registration of the name as a trade-mark is very important. If the name is not being used in this manner, then trade-mark registration may be of less of a concern.
Lori Hall is a partner and office leader of the Trademark Group for the Gowlings Southwestern Ontario practice in the Hamilton and Waterloo Region offices, and a member of the board of directors of Innovation Factory (iF).
Lori is a member of the Technology and Intellectual Property Groups, where she practises exclusively in the area of trademarks. As a registered trademark agent, Lori advises clients on all aspects of trademark prosecution, including advising clients on the registrability and availability of trademarks, the prosecution of applications, opposition and expungement proceedings, packaging review and rights transfer.