What is a Trade-Name?

David Michaels

7 years ago

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;

Trade-marks Act, R.S., 1985, c. T-13, s. 2;
1993, c. 15, s. 57;
1994, c. 47, s. 190;
2014, c. 20, s. 369, c. 32, ss. 7, 53.

Previous Version

How do you register a trade-name?

You may register a trade-name by:

Registering a corporation under the trade-name;
Registering a trade-style under your corporation that is the trade-name;
Registering a sole-proprietorship under the trade-name;
Registering a partnership under the trade-name;
Registering a limited partnership under the trade-name; or
Registering an unlimited liability company under the trade-name.

For example, my trade-name is Michaels.

I registered a corporation as Michaels Inc.

I registered a sole-proprietorship as MICHAELS.CA.

An individual is usually not required to register their name as a trade-name under the Business Names Act of your Province, but it is a good idea to do so. It you register your trade-name, you can be found when a proposed business or movie is considering whether the name is available.

You may search for specific trade-names by ordering a Nuans pre-search. Or you may order a Trade-name Long TRL NUANS report to do a fuzzy search for a trade-name.

Trade-Names Can Block Trademarks

Registering a trade-name can be a poor man’s trademark for a startup. Registering a trade-name may provide owners with some rights to continue using the name and even blocking someone else from registering a trademark under the name. However, the trademarks office does not search trade-names before approving trademark applications, so that may become a problem.

A trade-name owner may file an opposition to a trademark application after it is approved and advertised in the trademarks journal, based on their use of the confusingly similar trade-name.

Startups should invest in registering their name as a trademark as soon as possible because opposing a trademark can get very expensive. The cost starts at $5000 and it may go as high as $100,000, depending on the litigation tactics of each business and their trademark agents. If the loser is not satisfied, they can appeal a TMOB ruling to the Federal Court of Canada. Some opposition cases have even reached the Supreme Court of Canada.

PERSONS ENTITLED TO REGISTRATION OF TRADE-MARKS

Registration of marks used or made known in Canada

16. (1) Any applicant who has filed an application in accordance with section 30 for registration of a trade-mark that is registrable and that he or his predecessor in title has used in Canada or made known in Canada in association with goods or services is entitled, subject to section 38, to secure its registration in respect of those goods or services, unless at the date on which he or his predecessor in title first so used it or made it known it was confusing with
- (c) a trade-name that had been previously used in Canada by any other person.
Marks registered and used abroad

(2) Any applicant who has filed an application in accordance with section 30 for registration of a trade-mark that is registrable and that the applicant or the applicant’s predecessor in title has duly registered in or for the country of origin of the applicant and has used in association with goods or services is entitled, subject to section 38, to secure its registration in respect of the goods or services in association with which it is registered in that country and has been used, unless at the date of filing of the application in accordance with section 30 it was confusing with
- (c) a trade-name that had been previously used in Canada by any other person.
Proposed marks

(3) Any applicant who has filed an application in accordance with section 30 for registration of a proposed trade-mark that is registrable is entitled, subject to sections 38 and 40, to secure its registration in respect of the goods or services specified in the application, unless at the date of filing of the application it was confusing with
- (c) a trade-name that had been previously used in Canada by any other person.
Previous use or making known

(5) The right of an applicant to secure registration of a registrable trade-mark is not affected by the previous use or making known of a confusing trade-mark or trade-name by another person, if the confusing trade-mark or trade-name was abandoned at the date of advertisement of the applicant’s application in accordance with section 37.

Trade-marks Act, R.S., 1985, c. T-13, s. 16;
1994, c. 47, s. 195;
2014, c. 32, s. 53.

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VALIDITY AND EFFECT OF REGISTRATION

Effect of registration in relation to previous use, etc.

17. (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).

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When registration invalid

18. (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

38. (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.

Trade-Names Can Block Trademarks

PERSONS ENTITLED TO REGISTRATION OF TRADE-MARKS

Registration of marks used or made known in Canada

Marks registered and used abroad

Proposed marks

Previous use or making known

VALIDITY AND EFFECT OF REGISTRATION

Effect of registration in relation to previous use, etc.

When registration incontestable

When registration invalid

Statement of opposition

Grounds

Content

Frivolous opposition

Substantial issue

Counter statement

Evidence and hearing

Withdrawal of opposition

Abandonment of application

Decision