Question:  Isn’t incorporating like trademarking the company?

Answer: No. Incorporating gives you some common law rights, but not the exclusive right to use the distinctive word in your corporate name throughout Canada for the services the business provides.

For example, the distinctive portion of Michaels Inc. and Michaels Tech Inc. is “Michaels.”

The name of a company is a trade name. The registration or incorporation of  a company name provides the company with a basis to oppose someone else’s trade-mark application if the trade-mark is confusing with the company’s name (a trade-name that had been previously used in Canada by any other person.) See section 16 of the Trade-Marks Act.

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

  • (a) a trade-mark that had been previously used in Canada or made known in Canada by any other person;

  • (b) a trade-mark in respect of which an application for registration had been previously filed in Canada by any other person; or

  • (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

  • (a) a trade-mark that had been previously used in Canada or made known in Canada by any other person;

  • (b) a trade-mark in respect of which an application for registration had been previously filed in Canada by any other person; or

  • (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

  • (a) a trade-mark that had been previously used in Canada or made known in Canada by any other person;

  • (b) a trade-mark in respect of which an application for registration had been previously filed in Canada by any other person; or

  • (c) a trade-name that had been previously used in Canada by any other person.

• Where application for confusing mark pending

  (4) The right of an applicant to secure registration of a registrable trade-mark is not affected by the previous filing of an application for registration of a confusing trade-mark by another person, unless the application for registration of the confusing trade-mark was pending at the date of advertisement of the applicant’s application in accordance with section 37.

• 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.