Trademarks

How BC law treats it

There is no BC trademark statute. The federal Trademarks Act governs trademarks across Canada, including BC. Registration with the Canadian Intellectual Property Office (CIPO) is voluntary. A registered owner has the exclusive right to use the mark throughout Canada for the registered goods and services (s. 19), can sue for infringement (s. 20) and for depreciation of goodwill (s. 22), and benefits from a presumption of validity. Since June 17, 2019, applicants must classify goods and services under the Nice Classification, and registrations last 10 years and are renewable. Unregistered marks are protected by the common law tort of passing off and by section 7(b) of the Act, but only where the owner can prove goodwill, misrepresentation causing confusion, and damage (Ciba-Geigy Canada Ltd v Apotex Inc). That protection is limited to the area where the business has a reputation. Confusion is assessed from the perspective of a casual consumer in a hurry, looking at all the surrounding circumstances (Masterpiece Inc v Alavida Lifestyles Inc). Incorporating a BC company or registering a business name with BC Registries does not give trademark rights. A name approved for a company can still infringe someone else's registered trademark. CIPO examines applications, publishes them for opposition, and registers them if no successful opposition is filed. A registration can be expunged for non-use if the owner cannot show use in the three years before a section 45 notice.

What it means for your business

A brand is often a startup's most recognizable asset, and a conflict discovered after launch can force an expensive rebrand. Clearing a mark before investing in signage, packaging and marketing, and filing early, protects the business across Canada and helps when expanding or licensing. Investors and buyers check whether key marks are registered and owned by the company rather than a founder. Example: A Vancouver coffee roaster incorporates under a distinctive name and builds a following, then receives a demand letter from an Ontario company that had already filed for and registered a confusingly similar mark before the roaster launched. Because the BC company never searched or filed, it faces a forced rebrand despite its incorporation.

Risks and common mistakes

Assuming a BC incorporation or business name registration gives trademark rights. Launching a brand without a clearance search of the CIPO register and common law uses. Filing in the founder's personal name instead of the operating or holding company. Describing goods and services too broadly or too narrowly for the Nice classes. Letting a registration lapse by missing the 10 year renewal or failing to use the mark.