Best to own it!

By Steven Z. Raber, Fillmore Riley LLP

Most talk of “building your brand” properly focuses on marketing issues. Some-times, what gets overlooked are the legal processes available to protect a brand.

Business owners – and their advisors – are good at fulfilling their legal obligations around the registration of corporate names and business names. Where they often fall down is in actually protecting their brands.

It should be noted that the requirement to register under legislation like The Business Names Registration Act or The Corporations Act is not intended to confer rights on the owner. These statutes are intended to protect the public so, if something goes wrong, the public knows who to pursue.

Savvy business owners know that the protection of their brand – pre-venting others from selling the same or similar goods or services under a confusingly similar brand name or logo – is best achieved through the registration of a trademark.

In Canada, trademarks are governed by federal legislation called the Trade-marks Act. The registration of a mark, which can be made up of words, logos, a combination of words and logos, sounds and/or colours, pro-vides to the owner a monopoly to the use of the mark for the listed goods and services across Canada. Because trademarks are intended to identify the origin of goods or services, a trade-mark registration can prevent the use or registration of a confusingly similar mark by others in the same field, any-where in the country.

Taking the necessary steps to register a trademark can prevent future problems.

First, oftentimes, business owners and their advisers select a name that they find appealing. Satisfied that the inexpensive name search conducted for the provincial Companies Office allows them to use the name in their home province, they will proceed to register the corporate or business name and then use it in business, only to receive a cease-and-desist letter from the lawyers for an out-of-province business in the same or a related field. Sometimes, this results in the owner having to change the business’s name, which is not only embarrassing, but can also be expensive. Worse yet, it can lead to the owner being sued for trade-mark infringement.

How does this happen? And how can it be prevented? It hap-pens because, often, the search required to obtain a business name registration is simply not robust enough to identify all potential prior trademark or corporate registrations across the country. It can be avoided through more extensive searching and the filing of a trademark application. A business owner cannot be sued for trademark infringement (or the common law tort or civil wrong of “passing off ”) if using their own registered trademark.

Second, the owner of a registered trademark can stop others from using the same or similar mark anywhere in Canada even though their own business is only operating in one location. Without a registered trademark, unless the business owner has a nationwide reputation, nothing can be done to stop others from using the same name to identify their own goods or services in other parts of the country.

Remember, it is not enough to brand your business and focus on marketing. You are advised to also focus on protecting your brand through the registration of a trademark, giving you protection from others’ claims of infringement and better tools to protect your brand. It’s always better to be the hammer than the nail! 

Steven Z. Raber is a Winnipeg-based lawyer, registered trademark agent and trained mediator. You may reach Raber at (204) 957-8304 or by email at This email address is being protected from spambots. You need JavaScript enabled to view it..


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Piling Canada is the premier national voice for the Canadian deep foundation construction industry. Each issue is dedicated to providing readers with current and informative editorial, including project updates, company profiles, technological advancements, safety news, environmental information, HR advice, pertinent legal issues and more.