Why Does Location Matter for Trademarks

A trademark can be anything that represents a company or product. This could be a word, name, symbol or an image. Your business name, logo and slogan can all be trademarked. Trademarking your name, logo and slogan protects your business by preventing others from using confusing similar names, logos and slogans. For example, if McDonald’s was not trademark protected, many businesses could appear with the same name - even though they do not offer the same quality of services. These businesses could reap the benefit of the McDonald’s name, without paying anything. Once a name is trademarked, it cannot be used by others in the same or similar industry to the trademark owner.

Geography may also play a role in your trademark. Here are two common times when geography may play a role in a trademark:

Using a Location Name in a Trademark

Using the name of a location in your business name is a legal complexity.

The Case of Lum v. Dr. Coby Cragg Inc.

In the trademark case of Lum v Dr. Coby Cragg Inc., the Federal Court made a key decision that impacted how location can be used in a trademark. In the case, the Judge came to two conclusions regarding when a geography location is to be used in a trademark:

• When the trademark refers to a geography location
• When the location is indigenous to the service or product

To explain further, in essence a location name can be used in a trademark name, but only if it meets certain qualifications.

• Trademark refers to a geography locationIf, for example, your business is named Edmonton Dental Clinic, then to officially use this name as a trademark, your dentist clinic must be located in the designated area of Edmonton.
• Location is indigenous to the productProduct names are often derived from the location it is sourced from. For example, the name of the product you sell is ‘Italian Olive Oil’. However, if the Italian Olive Oil is not sourced from Italy, the trademark name will be seen as deceptive.

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Having Same Trademark Names

Two businesses having the same geographic name is highly unlike but possible. This occurs when two different geographic areas have the same name.  What happens in the scenario where a city name, street names or neighborhoods are the same?

A key aspect that is taken into trademarking is the ‘likelihood of confusion’. Two businesses can have the same name of "Park Street Dental Clinic" if the trademark is not registered. This is possible if they are separated by geography and their customers will never have access to opposing dental business.

For example, there may be a Park Street Dental Clinic in both Vancouver and Winnipeg, each with different owners. Due to the vast distance between the two areas, it is highly unlikely that their customers would have access to the others' dental business, which means the likelihood of confusion is relatively low.

Using a location name in the trademark name is complex and if you want to ensure that you are on the right side of the Trade-mark Act, it is best to consult with a trademark agent. A trademark agent will be able to assist you in choosing an appropriate trademark.