When you have put everything you have into building your business, you would want a business name that you have an exclusive right to use and that can be protected across Canada. Coming up with that perfect business name that is also registrable as a trademark can be extremely challenging, but our IP team at Lindsay Kenney LLP is here to help you.
In order to obtain a trademark, you would need your business name to be both unique and distinctive.
For your business name to be unique, the name should not be similar to other business names registered or used in Canada. In other words, a business name which is confusingly similar to a registered trademark cannot be registered. To avoid having a similar business name, you can run a search in the Canadian Trademarks Database to determine whether your potential business name has already been taken.
A distinctive trademark is one that is capable of distinguishing your goods or services from those of competitors. The distinctiveness of a trademark falls on a spectrum. When deciding on a business name, consider the following concepts arranged from the weakest to strongest protection:
- Generic: The business name should not be generic. A generic name is the common name for that good or service. For example, you cannot call your paper-supply company PAPER. A generic name cannot be used as a trademark.
- Descriptive: Similarly, the name cannot be descriptive, i.e. it cannot describe a characteristic of the goods or services you are selling. For example, SWEET would unlikely be registered as a trademark for ice cream.
- Suggestive: A suggestive mark hints at the goods or services without explicitly describing them. One example is TESLA for electric cars. A suggestive business name can be registered as a trademark, but is afforded a narrower scope of protection.
- Arbitrary: An arbitrary name is one that has a meaning, however, the meaning is unrelated to the goods or services. A popular example is APPLE for computers. Arbitrary names are considered distinctive.
- Fanciful: Coined or fanciful names are ones that are completely made up. One example is KODAK for cameras. Fanciful trademarks are considered inherently distinctive and enjoy a broad scope of protection.
That being said, trademarks that are initially non-distinctive may eventually acquire distinctiveness or a secondary meaning through use in Canada. This is proven through showing samples, sales and revenue figures and expenditures.
In addition to being distinctive, there are some business names that you cannot register as trademarks. These include:
- Names and surnames: You cannot trademark a mark that is nothing but a name or surname.
- Deceptively misdescriptive marks: For example, you cannot register VEGAN EXPRESS for a food delivery service that uses animal products.
- Place of origin: Your business name should not include a description of the geographical area that your goods or services come from.
- Words in other languages: Not only can you not register generic marks, but you also cannot register a translation of a generic mark in any language.
- Prohibited marks: These include any names that suggest a connection to public institutions, the government, Royal Family or an organization.
Choosing your business name and registering your trademark is one of the most important steps in starting your business. If you need assistance deciding on a registrable name, please contact Don Mainland at LK Law. If you are not sure about whether you should register your business name as a trademark, checkout our blog post – Trademarks – Are they Necessary?
This article is intended to be an overview of the law and is for informational purposes only. Readers are cautioned that this article does not constitute legal or professional advice and should not be relied on as such. Rather, readers should obtain specific legal advice in relation to the issues they are facing