Enforcing Your Trademark Rights

A name, logo, image or symbol representing your brand is a trademark. Trademark registration provides the user with rights across Canada and prevents the usage of the trademark by any other entity if there is a likelihood of confusion. You can challenge an infringement by enforcing your trademark rights. Trademarks are protected by way of the Trademarks Act, and common law in Canada. There are trademark enforcement strategies available to you in the case of infringement.

Opposition

You can initiate a trademark opposition proceeding after the trademark has been advertised in the Trademarks Journal. After an application is examined, the trademark is published in the Trademarks Journal. Within two months of being published, the trademark can be opposed. If your opposition is successful, the trademark will not be registered.

Passing Off

The common law tort of passing off was developed to protect the plaintiff (one who files a lawsuit) from damage to their business caused by competitors passing off their goods and services as the plaintiffs. Passing off is committed where goodwill exists, misrepresentations to the public is done deceptively, and there are actual or potential damages. Apart from common law, the Trademarks Act also contains a prohibition for passing off.

You can file an action against passing off in provincial court when your trademark is not registered. If you have a registered trademark, an action can be brought before the Federal Court.

Cancellation of Trademark

If you wish to challenge a trademark after it has registered, you can file for its cancellation or expungement under section 45 of the Trademarks Act. In order to maintain protection of a trademark after registration, it must be in use. Failure to continue to use your trademark after registration may result from its expungement from the register and a loss of trademark rights. The registered owner is required to file evidence showing use of the trademark or proof of special circumstances leading to non-use. Failure to show use of the trademark will lead to expungement from the Register of Trademarks. If the decision of the registrar is not satisfying, you can then appeal to the Federal Court.

Legal Appeal

If you wish to challenge an infringement or invalidate a trademark registration, you can initiate proceedings with the Federal Court. Generally, legal proceedings in Federal Court cost more than cancellation or opposition.

Trademark registration provides evidence of ownership that benefits you in a dispute. Enforcing your trademark rights can prevent your trademark from becoming diluted through unauthorized use. Defending your trademark against infringement can be a tedious process. Trademark lawyers in Alberta can provide guidance on such matters.

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