The trade name versus trade-mark issue had come up a number of times this week, for a variety of my clients; so I deemed this issue worthy of a posting.
Often I see clients who have registered their proprietorship or partnership name, or even incorporated a company with a distinctive name, at the Provincial Registry. The reason for coming to me typically is that another party has registered an identical trade name or incorporated a company with a very similar name and, understandably, the client would like to stop this.
In Canada, such a name registration with a Provincial Registry provides little if any protection against another party adopting that particular trade name as their own trade-mark. In fact there is no requirement under the Alberta Partnership Act that a trade/partnership name be unique - duplicate business names may exist.
Instead, trade-mark rights (or rights to the exclusivity of a name or mark) are acquired through proper use of the mark and/or through a federal trade-mark registration (which generally is based on use or may be even be expunged years down the road if not used properly).
Even a long-term and extensive use of a corporate name may not be enough to acquire trade-mark rights. For example, in Sunny Fresh Foods Inc. v. Sunfresh Ltd. (30 C.P.R. (4th) 118) the Trade-mark Opposition Board expunged the registration for SUNFRESH - because the evidence showed that, althought there was use of the business name Sunfresh Limited or Sunfresh Limited/Limitée, there was no use of the trade mark SUNFRESH.
The Trade-mark Opposition Board held that:
…there is nothing to differentiate the word SUNFRESH from the additional matter. The word SUNFRESH does not stand out from the additional matter… the perception of the average person upon seeing the words Sunfresh Limited or Sunfresh Limited/Limitée would be that it is the use of a corporate name, and not use of the word SUNFRESH as a trade mark.
Although Sunfresh Limited estimated that sales of its products featuring the SUNFRESH “trade-mark” over the previous five years had been in excess of $9.5 billion dollars, the improper use of the mark caused it to lose any trade-mark rights that it may have had.
Lessons to be learned:
- Canadian Trade names or corporate names are not necessarily trade-marks;
- Provincial name registrations are generally not helpful in acquiring trade-mark rights;
- Trade names can be used as trade-marks and rights can thus be acquired; and
- Use your trade-marks properly.