A trademark claim is simply a business owner’s way of saying, “hands off my brand.” When someone uses your intellectual property (IP), including your trademark or trade name, without your permission, trademark claims can help set things straight.
In this article, we’ll discuss how you can file a trademark claim against an infringer of your rights as a trademark owner. We’ll also discuss the defences that you can raise if you’re on the other end of a claim.
What is a trademark claim?
Trademark claims protect your registered mark or trade name when someone else uses it without your permission. As a legal remedy, they stop others from copying or using your brand’s name, logo, product packaging, design, or other unique signs.
The claim can also be based on legal prohibitions, such as against trademark infringement, or against confusingly similar goods or services. Depending on your needs, the other party can be held liable for damages and/or be subject to an injunction.
As an intellectual property owner, trademark claims can help you keep control over your brand or name. In short, these claims are practical and legal methods to keep your brand’s identity safe and unique in the marketplace.
To understand how these claims are made, here’s a general explainer on how trademarks work and what they protect:
Want to learn more about trademark claims? Consult the best intellectual property lawyers in Canada as ranked by Lexpert.
Trademark claims in Canada
You can file a trademark claim in Canada if the other party uses a mark or name on a product or service that is identical or confusingly similar to your own registered mark or name. However, even if you have an unregistered mark, you still have a legal remedy by filing an action for passing off (as will be discussed below).
You can file your claim in court, which can handle cases about:
- trademark infringement
- passing off
- depreciation of goodwill
In addition to litigation, there are other ways to enforce the rights over your trademark or trade name, including alternative dispute resolution (ADR) process.
But whether the case is in court or in ADR, you can pursue a trademark claim using the following remedies:
- injunction, which stops the use of the mark
- payment of damages or profits
- destruction of the goods bearing the infringed mark
How do you file a trademark claim in Canada?
If you’re already decided to pursue a trademark claim in court, here’s what the process will look like:
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Consult a lawyer. Before anything else, you must talk to an IP lawyer, or a lawyer who specializes in trademarks, to know your legal options for your case.
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Gather proof of registration. This is true if your mark or name is registered, as this will serve as evidence that you have the legal standing to sue anyone in court.
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Decide where to file the claim. These claims can be brought either in the Federal Court or a provincial Superior Court.
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File the statement of claim in court. This will state your allegations, legal basis, and the remedies that you’re asking for.
Knowing your cause of action
Part of deciding whether you have a trademark claim to begin with is checking if you have a cause of action against the other party. As provided by the Trademarks Act and under common law, there are several causes of action where you can base your trademark claim on:
- unfair competition and prohibitions on trademarks
- trademark infringement
- depreciation of goodwill
- action for passing off
We’ll briefly discuss them below. In any case, it is still better to consult with an intellectual property lawyer if you need help with your trademark claim.
Unfair competition and prohibitions
As a catch-all provision, the Trademarks Act prohibits the following when it comes to the use of someone else’s trademarks:
- discrediting a competitor by making false or misleading statements
- any act that causes confusion over two products or services
- passing off one’s own products as that of another or the registered mark
Trademark infringement
Like the other kinds of IPs, trademark infringement occurs when the rights of the owner of a registered trademark have been violated. The Trademarks Act also lists other acts that can be considered as trademark infringement.
Depreciation of goodwill
An illegal use of a registered trademark can also result in the depreciation of the value of the product’s goodwill. This is prohibited, since it not only reduces the profits of the rightful trademark owner, but also because it damages the reputation that it has built.
Action for passing off
Trademark claims are not just for registered marks since owners of unregistered marks can also pursue a claim for passing off.
In an action for passing off, you must:
- prove that you have goodwill in the mark or name in question
- present evidence that the public was misled by the other party
- offer proof of actual or potential damage to you and your business
Trademark opposition
Aside from filing a case for infringement, you can oppose an application of a mark or name that is confusingly similar to your own. On the flip side, if you’re the one registering a mark or a name, know that oppositions can also be filed against your pending registration.
Here’s a quick video that discusses trademark opposition, in relation to the process of registration of trademarks:
If you need help with trademark registration or opposition, reach out to any of the Lexpert-ranked best law firms for intellectual property law in Canada.
Filing the trademark claim in court
You have two options for where to file your trademark claim:
- Federal Court
- provincial Superior Courts
Where you’ll be filing your claim will also depend on the scope of the remedies you’re asking for. The Federal Court covers the whole of Canada, while a provincial court usually deals with matters within the province.
Also, certain subject matters can only be filed in either or both courts:
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Federal Court: actions to:
- invalidate IP rights
- resolve conflicting trademark registrations
- expunge or correct entries in trademark registrations
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provincial Superior Courts: if the action is based on a contract between the conflicting parties (e.g., infringement under an employment contract)
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both courts: IP infringement, including trademark infringement
Limitation period
The general rule is that a trademark claim must be filed within two years from when your cause of action arises. However, this is not always the case since it will depend on your specific circumstance, the provincial laws, and the cause of action on which your claim is based.
For more details on this, consult an IP or trademark lawyer near you.
What are the defenses against a trademark claim in Canada?
But what if you’re the defendant? The law provides for several ways to defend yourself against a trademark claim in Canada. The right defence depends on your case and the type of claim made against you.
Here are some of the common defences you can consider against these claims:
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mark or name is unregistered: that the mark is not registered, and the plaintiff is not entitled to the legal protections under the Trademarks Act
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non-use of the mark: if the plaintiff has not been using the mark for three years, the Trademarks Act says that the registration can then be expunged or amended
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not identical or not confusing: one of the best defences is that the two products or marks are not identical or confusingly similar to each other
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faulty registration: attacking the trademark registration’s validity (e.g., the mark was not registrable at that time, is not distinctive, or has been abandoned)
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no goodwill or competition: for passing off claims, it is a defence that there is no goodwill in the mark, no confusion, or both parties’ businesses do not compete
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not well-known mark: this can be used in a claim for depreciation of goodwill, in addition to the defence that the value of the goodwill has not depreciated
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good faith: if the court finds good faith in the use of a mark or name before it is registered, the court can permit its use but only in a defined area
Trademark claim: Enforcing your right to your intellectual property
Keeping your hands on your trademarks, and even pursuing trademark claims when needed, are shields for any business’s reputation and hard work. Whether stopping an imitator or defending against a claim, knowing the process makes all the difference. In the end, protecting a brand is about staying alert and using the right tools when needed.
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Related Article:
Steps on how to trademark a name in Canada