In Alberta, having a provincial trade name registration does NOT give a person any real legal basis for intellectual property ownership rights to that name. The same goes, for the most part, for incorporating under a particular corporate name.
In Alberta, trade names are registered under the Partnership Act. Service Alberta states on their website that: “[r]egistering a business name doesn’t grant any right of ownership of the name. It’s simply proof that the name is being used by a particular business”.
Below are some points that highlight the difference between a trade name declaration filed with Alberta Registry and a federally registered trademark:
Trade names (corporate registry/partnership/sole-proprietor names) are different from trademarks. Trademarks often include trade names, if the name is “used” properly as an identifier of the goods or services provided by the business.
Trademarks may also include graphics, logos, slogans, shapes, colours and even sounds, if those are “used” properly.
Trademark rights are dependent on proper “use” of the mark, with more extensive “use” usually resulting in greater rights. A federal trademark registration provides additional intellectual property rights that can be enforced under the Trade-marks Act. Often times these registered rights are significant.
Registering a trade name with Alberta Corporate Registries gives little, if any protection or ownership rights. As noted above, the Alberta Partnership Act allows for multiple identical trade names to be declared and registered by different entities.
A provincial trade name registration under the Alberta Partnership Act also does not provide a basis for a legal cause of action (i.e. a basis for a lawsuit). It’s really just an identification requirement, i.e. when someone uses a name different from their own real name, a person can search that “trade name” and find out the individual behind that name.
In Alberta, section 12(1)(c) of the Business Corporations Act prohibits a corporation from having a “similar” name to an existing Alberta, Canadian or extra-provincially registered corporation, if that name is confusing or misleading.
As noted above, the Alberta Partnership Act allows for multiple identical trade names to be declared and registered by different entities, including by corporations.
Therefore, the Business Corporations Act will not prevent a numbered corporation, or a differently named corporation, from going out and filing a trade name declaration under the Partnership Act for a similar name of another corporation that’s already registered under the Business Corporations Act. The same goes for federally registered companies.
At best, one company with the prior registration under the Business Corporations Act could send a request to the Registrar of Corporations (under s. 13(2)) to give notice to the subsequently registered company change its name (under s. 13(1)).
As noted, trademarks can be registered or they can be unregistered. Unregistered marks can be enforced under the tort of ‘passing-off’. Registered trademarks are enforced against infringers under the federal Trade-marks Act. They usually provide a stronger cause of action than simply going by way of ‘passing-off’. They are enforceable all across Canada and not limited to a single province.
A Provincial trade name registration may be an indication of someone having unregistered rights and there being a risk of ‘passing-off’, e.g. if one subsequently adopts that name (or a similar name) for a similar business. But the mere registration at Alberta Corporate Registry does not itself provide true intellectual property rights. Actually, trade name declarations may remain on the Alberta Corporate Registry long after a particular individual or entity has gone out of business.
What does provide those intellectual property and trademark rights are: (1) proper “use” of the name in relation to the business’s goods and services, (2) continued “use” over time and (3) a federal trademark registration.
Trademarks vs. Corporate Names vs. Trade Names vs. Unregistered Rights:
Because there are a number of different registries, such as the federal trademark registry, the Alberta corporate name registry and the Alberta trade name registry, there is the possibility of someone getting a registration on one such registry and then someone else getting a registration on another registry. Typical cases involve federal trademark registration vs provincial trade name declaration, or federal trademark registration vs provincial corporate name, or even corporate registration vs trade name declaration.
Without a detailed analysis and review, it is difficult to say which such registration/declaration will have the greater rights. However, a federal trademark registration normally provides significant rights. But, that is not always the case. Federal trademark registrations have been expunged or invalidated based on another’s earlier or prior “use” of an unregistered name or trademark.
The strength of unregistered rights usually depends on: (a) the length of time the name or mark has been used, (b) the extent/amount of sales and business volume under that name or mark and (c) the extent of geographic range where goods and services were provided under the name or mark. Sometimes unregistered rights may trump registered rights, including a federal trademark registration; especially if the unregistered rights are significant, have an earlier date of first use, and the federal registration is less than five years old.
Often NUANS searches are conducted to assist with determining the availability of a new proposed name. This is a computerized and automated process which compares the proposed name with the names and entries in various provincial corporate databases and the federal trademark registry. This can be extremely efficient. However, because it is a computerized process, it may also miss relevant entries or listings.
Ideally the NUANS search results are interpreted by a qualified trademark agent or trademark lawyer, so that a name availability opinion can be given based on those results. It is also usually desirable to have the trademark agent or trademark lawyer conduct manual searching of the federal trademark registry, especially for variations of the name/mark, to if the NUANS search results missed a relevant prior registered trademark.
If you would like advise on the extent of rights you may have in a particular business name, you should see a lawyer who practices in the area of trademark law. If you need assistance with applying for a federal trademark registration or with conducting a trademark registry search, you should contact a registered trade-mark agent who can represent you at the Canadian Intellectual Property Office.