Is your Canadian restaurant’s trade-mark protected?

 Seven advantages of having your restaurant’s trade-mark protected
By Chad Finkelstein
November 29, 2012

Wine pairings to elevate your restaurant's dessert menu You have spent countless hours and dollars developing and operating your restaurant. (Okay, maybe you can count the dollars, but you’d probably prefer not to.) You have invested blood, sweat and tears into creating a place where customers want to eat, revisit and recommend. People know that when they walk into your establishment, there is a certain level of quality, service and ambiance that they can expect and look forward to each time. You have a brand. You have an identity.

How much would it hurt your business if you had to change your name?

It constantly amazes me how many restaurant owners do not take the necessary step of applying for trade-mark registration for their restaurant name as early as possible. Trade-mark registration is a great idea for your business, especially if you have potential plans for expansion in the future. Some of the advantages of having a registered trade-mark include :

  1. You will enjoy the right to the exclusive use of the mark in Canada, even if you don’t ever use it across the country. This means that if you have a registered trade-mark for your business in Toronto, you can prevent someone in Calgary, for example, who wants to use a similar name.
  2. Trade-mark infringement of a registered mark will be easier to establish than would be the case under a common law passing off action, which is really all that is available to business name owners. Without a registered trade-mark, you can really only enforce your trade-mark against similar businesses within the general geographic area where you conduct business.
  3. Potential competitors who are diligent enough to conduct a trade-mark search prior to conducting business under a similar name or with a similar mark will be alerted to the unavailability of the mark, or anything confusingly similar.
  4. Trade-mark infringement of a registered mark will be easier to establish than would be the case under a common law passing off action, which is really all that is available to business name owners. Without a registered trade-mark, you can really only enforce your trade-mark against similar businesses within the general geographic area where you conduct business.
  5. Potential competitors who are diligent enough to conduct a trade-mark search prior to conducting business under a similar name or with a similar mark will be alerted to the unavailability of the mark, or anything confusingly similar.
  6. Proceedings for trade-mark infringement can be heard in the Federal Court of Canada. Trade-mark infringement proceedings cannot be bound by any arbitration provisions contained in commercial agreement.
  7. As a licensor of a registered trade-mark, you can exercise a sufficient degree of control over the character and quality of goods and services sold in association with the mark. If you have any plans to franchise your business, or distribute private-label products, a strong and enforceable license is of critical importance.
  8. Registered trade-marks generally provide stronger protection against a competitor, certainly, but also against a non-competitor where their use of a similar mark may have the affect of depreciating the goodwill associated with the mark.
  9. Registration of the mark in Canada can entitle you to trade-mark registration abroad.

The first step towards trade-mark registration is to run a search to see whether the proposed mark is available or whether there are any identical or confusingly similar names out there which would preclude you from obtaining registration. You can run searches for free on the Trade-marks Database, but they will only tell you if an identical mark already exists, not a similar one.

Once you and your trade-mark lawyer have confirmed the availability of the mark, an application gets prepared for submission to the Trade-marks Office (TMO). Approximately six months after filing the application, you will receive an initial response from the TMO containing the results of their internal review of the application. If the TMO either has technical questions or believes the mark is confusing with another previously filed/registered mark, it will require further submissions from you. This is referred to as “issuing an office action”. If no issues arise from the TMO’s internal review, or all office action issues are resolved with TMO, the application will be approved for advertisement in the weekly Trade-Marks Journal, at which point any third party reading the Journal has two months to oppose the application. If no third party opposes the application in time, the TMO allows the application to be registered. TM registrations are valid for 15 years and can be renewed.

Once the application is filed, it takes about 12 months to obtain registration, provided there are no office actions or oppositions and you respond to our information and other requests in a timely fashion.

Your trade-mark is what helps your customers distinguish your restaurant from your competitors. It is vital that you take all the steps you can to protect that. Next month, we will review some of the criteria in assessing whether a trade-mark is registerable at all.


About the author

Chad Finkelstein is a franchise lawyer at Dale & Lessmann LLP (www.dalelessmann.com) in Toronto and can be reached at cfinkelstein@dalelessmann.com or (416) 369-7883.

Leave a Reply

Your email address will not be published. Required fields are marked *