Registered ® vs. Unregistered ™ Trademarks


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REGISTERED ® VS. UNREGISTERED ™ TRADEMARKS

Hello again. Andrei Mincov here with Trademark Factory. In this video you will learn the difference between registered and unregistered trademarks.

Unlike most other countries, Canada provides some limited protection to unregistered trademarks. They are also called “common law trademarks”.

If a business owner is using an identifier (be it a name, slogan, logo, etc.) as a trademark, this identifier is by this fact alone an unregistered trademark.

The owner of an unregistered trademark may prevent competitors from using the same or similar trademark in connection with the same or similar products or services. This sounds good but to be able to do it, you would need some very serious evidence of your unregistered trademark being well known in the geographical area where it is used without permission by the competitor.

On the other hand, trademark registration provides multiple advantages over unregistered trademarks.

We will talk about benefits of registered trademarks in the next video, but for now let me just say that you don’t need to prove that somebody knows your trademark anywhere in Canada when you have a registered trademark. The registration by itself is sufficient proof that you own the rights. With unregistered trademark you will need to spend a lot of time, a lot of money to provide proper evidence if you want to go after somebody who is using your unregistered trademark without your permission.

Another thing you should know is that the Trademarks Office when it receives somebody’s trademark application, only checks registered and applied-for trademarks to make sure they don’t allow two confusingly similar trademarks to coexist in the register, but they don’t check unregistered trademarks. So if you have an unregistered trademark, a competitor can steal and register this trademark. Because the Trademarks Office simply does not care about your unregistered trademarks.

The good news is that you will be able to oppose such registration (if you find out about the trademark application before it gets approved) or cancel it (by filing a lawsuit against the competitor). The bad news is that it will cost you a ton of money to do it, even though you are 100% in the right. There is a big difference between being right and being able to do something about it.

In addition to these, there are several other procedural advantages of registering your trademarks. In simple terms, if at some point in time you can see yourself taking your competitors to court over unauthorized use of your trademarks, your lawyer’s job will be much simpler (and thus it will cost you significantly less) if your trademarks are properly registered.

You should also know how to properly mark your products and marketing materials. If you are using an identifier as an unregistered trademark, you should place a ™ symbol next to it. On the other hand, if your trademark is already registered, you should use the symbol ® to tell the public that you have invested in serious legal protection of your business assets.

So again ™ you can put next to everything that you yourself consider your trademark you don’t have to pay anybody any money, you don’t have to ask anybody’s permission, just put it out there and use it.

However, if you want stronger protection you would register your trademarks and after they are registered you would put ® symbol next to them.

Some countries, for example the United States, have very strict laws about misleading use of the ® symbol in connection with unregistered trademarks. So if you registered your trademark in Canada only, and you sell your products marked with the ® sign to the U.S. market, you may be in serious trouble there, even though the product originates from Canada where you do have a registered trademark. So be careful.

In the next video, I will tell you about 7 benefits of trademark registration.

If you have any questions, feel free to call me, email me or go to our website at mincovlaw.com. By the way, we also have a dedicated website for our trademark services at TrademarkFactory.com.

Thank you for watching. Talk to you soon.


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Watch our other FAQs:

Introduction — What Every Small Business Owner Needs to Know About Trademarks
What Are Trademarks and Why Do We Need Them?
Trademarks vs. Trade Names
What Cannot Be Protected as a Trademark
Trademarks Don't Give Absolute Monopoly Over Words and Images
7 Benefits of Trademark Registration
When Should You Register Your Trademarks
What is the Trademark Registration Process
Trademark Tips & Tricks