A trade-mark is a slogan, word, design, or symbol which serves to indicate a person\’s or business\’s goods and services. Some famous trade-marks include PEPSI (a word), McDonald\’s golden arches (a symbol), and the shape of a Coke bottle (a shaping of a package). Trade-marks may be registered or unregistered; registration has significant advantages. In either case, the trade-mark must be used as a trade-mark in order to benefit from protection.
A trade-mark is used by being marked on goods or packages of goods that are sold in the normal course of trade. It is not enough to merely advertise the trade-mark; it must actually be applied to the goods or packages at the time of sale. In the case of services, which are intangible products that cannot be marked, it is sufficient to display the mark in performing or advertising the service.
If the owner of a registered trade-mark fails to use the trade-mark properly, then the associated trade-mark rights may be lost.
Registering a trade-mark grants to the trade-mark owner the exclusive right to use the trade-mark in Canada in association with the goods or services for which the trade-mark was registered. Anyone else who does this without consent is infringing the trade-mark. It is also infringement to use a mark that is confusingly similar to a registered trade-mark, or to use the trade-mark in a way that is likely to depreciate the goodwill associated with the trade-mark. It is up to the trade-mark owner to enforce its trade-mark rights.
If a trade-mark is not registered, the owner may still protect the trade-mark, but legal protection will be limited to the geographic region where the trade-mark was used or made known (a registration grants rights across the country). The unregistered owner cannot allege the types of infringement that a registered owner can claim; instead, the unregistered owner must bring an action for passing off, and must establish three things: first, that the public associates a certain degree of goodwill or reputation with the trade-mark; second, that the defendant has made a misrepresentation to the public; and third, that the trade-mark owner has consequently suffered injury. Even if the defendant was using the identical unregistered trade-mark, the trade-mark owner must still prove these three conditions. If the trade-mark had been registered, it would have been sufficient for the trade-mark owner to prove that the identical trade-mark was being used on similar wares or services.
(An aside on orthography: you might note that Americans spell it \”trademark\”, while the British spelling is \”trade mark\”, two words. Why the hyphen in the Canadian spelling? No special reason. When the Trade-marks Act was drafted, a hyphen was inserted, and no one bothered to take it out.)