What is a Trade-Name?

What is a Trade-Name?

What is a trade-name?

A “trade-name” means the name under which any business is carried on, whether or not it is the name of a corporation, a partnership or an individual;

 

VALIDITY AND EFFECT OF REGISTRATION

Effect of registration in relation to previous use, etc.

  •  (1) No application for registration of a trade-mark that has been advertised in accordance with section 37 shall be refused and no registration of a trade-mark shall be expunged or amended or held invalid on the ground of any previous use or making known of a confusing trade-mark or trade-name by a person other than the applicant for that registration or his predecessor in title, except at the instance of that other person or his successor in title, and the burden lies on that other person or his successor to establish that he had not abandoned the confusing trade-mark or trade-name at the date of advertisement of the applicant’s application.

  • When registration incontestable

    (2) In proceedings commenced after the expiration of five years from the date of registration of a trade-mark or from July 1, 1954, whichever is the later, no registration shall be expunged or amended or held invalid on the ground of the previous use or making known referred to in subsection (1), unless it is established that the person who adopted the registered trade-mark in Canada did so with knowledge of that previous use or making known.

  • R.S., 1985, c. T-13, s. 17;
  •  2014, c. 32, s. 56(F).

When registration invalid

  •  (1) The registration of a trade-mark is invalid if

    • (a) the trade-mark was not registrable at the date of registration;

    • (b) the trade-mark is not distinctive at the time proceedings bringing the validity of the registration into question are commenced;

    • (c) the trade-mark has been abandoned; or

    • (d) subject to section 17, the applicant for registration was not the person entitled to secure the registration.

 

Statement of opposition

  •  (1) Within two months after the advertisement of an application for the registration of a trade-mark, any person may, on payment of the prescribed fee, file a statement of opposition with the Registrar.

  • Grounds

    (2) A statement of opposition may be based on any of the following grounds:

    • (a) that the application does not conform to the requirements of section 30;

    • (b) that the trade-mark is not registrable;

    • (c) that the applicant is not the person entitled to registration of the trade-mark; or

    • (d) that the trade-mark is not distinctive.

  • Content

    (3) A statement of opposition shall set out

    • (a) the grounds of opposition in sufficient detail to enable the applicant to reply thereto; and

    • (b) the address of the opponent’s principal office or place of business in Canada, if any, and if the opponent has no office or place of business in Canada, the address of his principal office or place of business abroad and the name and address in Canada of a person or firm on whom service of any document in respect of the opposition may be made with the same effect as if it had been served on the opponent himself.

  • Frivolous opposition

    (4) If the Registrar considers that the opposition does not raise a substantial issue for decision, he shall reject it and shall give notice of his decision to the opponent.

  • Substantial issue

    (5) If the Registrar considers that the opposition raises a substantial issue for decision, he shall forward a copy of the statement of opposition to the applicant.

  • Counter statement

    (6) The applicant shall file a counter statement with the Registrar and serve a copy on the opponent in the prescribed manner and within the prescribed time after a copy of the statement of opposition has been served on the applicant.

  • Evidence and hearing

    (7) Both the opponent and the applicant shall be given an opportunity, in the prescribed manner, to submit evidence and to make representations to the Registrar unless

    • (a) the opposition is withdrawn or deemed under subsection (7.1) to have been withdrawn; or

    • (b) the application is abandoned or deemed under subsection (7.2) to have been abandoned.

  • Withdrawal of opposition

    (7.1) The opposition shall be deemed to have been withdrawn if, in the prescribed circumstances, the opponent does not submit either evidence under subsection (7) or a statement that the opponent does not wish to submit evidence.

  • Abandonment of application

    (7.2) The application shall be deemed to have been abandoned if the applicant does not file and serve a counter statement within the time referred to in subsection (6) or if, in the prescribed circumstances, the applicant does not submit either evidence under subsection (7) or a statement that the applicant does not wish to submit evidence.

  • Decision

    (8) After considering the evidence and representations of the opponent and the applicant, the Registrar shall refuse the application or reject the opposition and notify the parties of the decision and the reasons for the decision.

  • R.S., 1985, c. T-13, s. 38;
  •  1992, c. 1, s. 134;
  •  1993, c. 15, s. 66.

David Michaels

David Michaels, J.D., B.Eng., CHRM is a legal blogger (and a trained attorney) who holds certificates in Canadian Trademark Law (2012) and Canadian Patent Law (1996) from McGill University. He has worked in the area of trademark law in Canada since 1995 and in the USA since 1993.

David is a brand consultant, a writer, an eCommerce entrepreneur, and an aeronautical engineer.
http://ca.linkedin.com/in/davidtmichaels/

Warning & Disclaimer: The pages, articles and comments on trademarkpro.ca do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the author’s notes of the current state of trademark law and should not be attributed as opinions of the author, his employer, clients or the sponsors of trademarkpro.ca. The author does not warrant that these notes are up-to-date. Trademark law is constantly changing and it varies between jurisdictions and even within jurisdictions. This website should not be relied upon.

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