The name of a company is often its most underestimated asset, a true treasure that sleeps. It is better to protect it, as the awakening can be harsh and costly.
The value of a business is often linked to the reputation of its trade name. Think for example of McDonald's, Tim Hortons, or Apple. While many companies wisely protect their "identity," many others neglect to do so.
Thus, a company, "L'Originale," based in Western Canada, uses several unregistered trademarks, including "Masterpiece Living." Five years later, another company, "L'Usurpatrice," obtains the registration of the same trademark.
"L'Originale" brings the matter to court and requests the cancellation of the registration made at the request of "L'Usurpatrice" from the register of trademarks.
The case is eventually brought before the Supreme Court of Canada*. It clearly establishes the criteria for an owner to have the exclusive right to use a trademark throughout Canada. There must be no confusion, at the moment of a consumer's first impression, with other trademarks across Canada.
The Court orders the Registrar to cancel the registration of "L'Usurpatrice's" trademark and rules in favor of "L'Originale".
"The registration of a trademark alone does not confer priority rights over the trademark." It is rather the use of the trademark that grants exclusive rights.
The name of a business is often its most underestimated asset, a true dormant treasure. It is better to protect it because the awakening can be abrupt and costly.
*S.C. Canada 33459
