The Name Game: Trademarks versus Name Registrations
By: Alexandra Tzannidakis, LL.B.
Gone are the days (assuming they existed) when you could paint your business’s name on a shingle, hang it out front, and be done with it. In today’s heavily bureaucratic world, there are many types and levels of registration for different kinds of business names – some mandatory, some voluntary, some depending on the context. One of the main sources of name confusion I hear from my clients stems from the difference between name registration and trademarking. Despite some overlap in the layperson’s vocabulary, these two concepts are wholly different from each other. Each concept has a range of subcategories that are beyond the scope of this article, but the following summary should provide an introduction to the differences between the two main concepts.
There are different kinds of name registration depending on the circumstances.
When creating a corporation, whether at the federal or provincial level, the new corporation’s name must be approved by the relevant body as conforming to the legal name requirements of the incorporating Act. In Canada, this usually involves a name search report that confirms the name is not identical or too similar to another name. Most incorporating acts also require the name to not be deceptive, confusing, indistinct, obscene, and so forth. Corporate name registration is mandatory, but it is only really a kind of basic safeguard against conflicting names. Registering the corporation’s name is not a guarantee of protection and the system is not foolproof. It simply cuts down on the chances that your business will be confused with someone else’s.
Besides corporate name registration, there is also the practice of business name registration. The various provinces have their own requirements for registering the names of any businesses (not necessarily just incorporated ones) that operate within their borders. This can encompass everything from huge companies down to an individual doing business under his or her own personal name as a sole proprietorship. It often affects not-for-profit and charitable organizations as well, as the definition of “doing business” within a province is frequently as simple as having an office there or advertising locally. Sometimes a business may operate in a province under a registered name that is different from its legal corporate name. Business names are usually subject to a regime of approval, registration, and periodic renewal. Again, however, this is again a mandatory system and not one that ensures much protection for your business identity.
Unlike most registration schemes, trademarking is completely optional. Trademarks are words, sounds, or designs that distinguish the goods and services of one provider from the rest of the market. It is distinct from copyright, which protects things like artistic and literary works. Its big advantage over mere registration is that it gives you legal title over intellectual property such as a business or product name. This is legally akin to owning the title to a piece of land. The trademark gives the owner grounds to sue anyone who infringes it. It also protects you from being sued, since it requires going through the trademark search process and therefore ensures that your trademark is unique.
Trademarking is a broad topic, but most relevant to the present discussion is the concept of trademarking a trade name. A trade name is the name under which a business is conducted – it may or may not be the same as the company’s registered corporate or business name. A trade name (sometimes called a ‘doing business as’ name or DBA) is not protective in and of itself, but it can be trademarked if it is being used to identify your goods and services. For example, a corporation with the legal name Blorax Cleaning Supplies Inc. may be doing business as Blorax and be putting this name on all its products. This would make “Blorax” (but not the full legal name) a trade name that is eligible to be trademarked.
Registration of a trademark gives you exclusive use across Canada for 15 years at a time, subject to renewal. Trademark applications are complex and require very specialized knowledge to navigate properly, so if you would like to trademark something you should consider hiring a lawyer who is also a qualified trademark agent to assist you.