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The Idea of a New Mark Is Not Enough

Published: 07 September 2023

In the excitement of launching a new business, product or service, unveiling the trademark under which you will do business can be tempting. However, it is better to hold back or to be proactive by filing an application to register the trademark in question with the Canadian Trademark Registrar. This article will discuss the risks you may face if you do not take precautions.

Do You Have Rights in a Trademark That You Came Up With?

No rights arise from having thought of a trademark or having had the idea first. Registering a trade name in the Quebec enterprise register, for example, does not confer any right to that name either. In fact, a trademark will only be protected if it has been used in association with the goods or services in question, in accordance with the use provisions set out in the Trademarks Act (the "Act"), or if an application for its registration with the Canadian Trademark Registrar has been filed.

Pre-launch announcements or certain "scoops" revealed on social medias regarding new businesses, goods or services to be launched under a trademark when the goods or the services are not yet sold or available on the market, are not considered valid use of the trademark within the meaning of the Act and, therefore, confer no rights.

In this context, it is important to take all the necessary measures to protect any trademark before it is publicly disclosed.

Serious Consequences

If your trademark was to become known before you have begun using it or before a trademark  application has been filed, a third party could decide to begin using that trademark or a similar one and even file a trademark application before you do. This puts you at risk of not being able to use the trademark on the market or register it as a trademark, to the benefit of said third party.

In such a situation, the only option would be to think of a new trademark, and, unfortunately, give up on the steps taken to launch the coveted trademark. This usually represents the loss of many hours and resources invested, as well as a great disappointment.

The time required to come up with a trademark idea, conduct availability searches and file the trademark application varies considerably from one project to another. However, it is important to remember that, during this time, it is best to be cautious and avoid disclosing the trademark in question, because as long as it is only a project, in the sense that its use in the market has not begun or that a trademark application has not been filed, there is always a risk of a public disclosure being taken advantage of by a third party. Better be safe than sorry!

Do You Have Any Questions? We Can Help You.

Do not hesitate to contact our team of trademark specialists who assist businesses in all sectors of activity. They will be pleased to guide you through the availability search and protection strategy for your mark in Canada and internationally.

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As the partner in charge of BCF’s Trademark group, Johanne Auger supports businesses of all sizes in developing and supervising national and international trademark portfolios. Her global vision of issues, her excellent listening skills and her personalized approach help her develop protection strategies tailored to the realities and needs of each client, whether in Quebec, Canada or worldwide. With more than 25 years of experience in trademark protection, intellectual property management and litigation, Johanne advises start-ups, SMEs and large companies operating in the technology, agri-food, pharmaceutical, tourism, cultural, finance, manufacturing, textiles and retail industries. She also leads BCF's Internet group, which offers businesses strategic legal advice regarding their online presence. An excellent communicator eager to share her knowledge, Johanne regularly gives trademark lectures to various organizations in Europe, Asia and North and South America. She provides customized training to senior management and marketing teams from several companies. She has also been the Director of the intellectual property courses offered by McGill University and the Intellectual Property Institute of Canada and has served on the Institute’s board of directors. Concerned with better representation of women in the workplace, she co-directs BCF’s Parity and Inclusion Committee. Johanne Auger will be attending the UNIFAB conference in Paris, FR, March 21st to March 22nd, 2024.  Johanne Auger will be attending the International Trademark Association Annual Meeting in Atlanta, GA, May 18th to May 22nd, 2024. 

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