Why Use A Trade-Mark Agent To Assist You With Your Trade-Mark Registration?

By Vanessa DeDominicis

Trade-mark Agents offer professional services relating to the registration, maintenance and protection of trade-marks, i.e. a word, design, number, two dimensional or three-dimensional form, sound or colour, or a combination of two or more of these elements which a trader uses to distinguish his/her products or services from those of his/her competitors and serves to establish goodwill with the consumer.

What is a trade-mark agent?

In Canada, registered trade-mark agents are the only professionals permitted under the Trade-marks Act (RSC 1985 c.T-13) to represent and act on behalf of trade-mark owners to obtain trade-mark registrations before the Trade-marks Office. While some trade-mark agents may also be lawyers, this is not a pre-requisite for becoming a trade-mark agent.

The role of a trade-mark agent includes the functions of preparing, filing and prosecuting applications for registration of trade-marks; giving opinions on the registrability of trade-marks in accordance with criteria imposed by the law and procedure and practice and conducting searches to see whether likelihood of confusion might exist between the trade-mark searched and trade-marks or trade names of others.

The registration of a trade-mark is not automatic. The Registrar must approve the application for registration for its publication in the Trade-marks Journal. If an objection is raised by the Registrar or if anyone files an opposition to such application after its publication, the trade-mark agent drafts an appropriate response or prosecutes the opposition proceedings to defend the client’s interests and presents appropriate evidence and argument to convince the Registrar that the subject trade-mark is registrable.

A trade-mark agent must have thorough knowledge of the Trade-marks Act as well as the related rules, jurisprudence and Trade-marks Office practice.

A trade-mark agent advises and serves trade-mark owners in the maintenance and protection of their trade-marks which must remain distinctive and properly used at all times. Should trade-mark owners allow others to use their trade-marks or grant franchises, a trade-mark agent can advise them in order that use of the trade-marks be properly licensed to protect the distinctiveness and enforceability of the trade-marks, failing which they might be subject to expungement from the register.

A trade-mark agent also assists trade-mark owners in managing their trade-mark portfolios, including ancillary services such as recording at the Trade-marks Office any change of ownership of registered trade-marks, security agreements affecting trade-marks and the like, as well as attending to renewal of trade-mark registrations.

Vanessa DeDominicis practices in the area of business law. As a Registered Trade-mark Agent with the Canadian Intellectual Property Office and the United States Patent and Trade-mark Office, her business law practice has a specific focus on intellectual property law, including filing Canadian and US trade-mark applications and advising clients on infringement issues. You can contact Vanessa on 250-869-1140 or dedominicis@pushormitchell.com to discuss the registration of your trade name as a trade-mark. This information applies as a general rule ONLY and may change depending upon the specific circumstances of your own situation. You should consult a lawyer before acting on any of this information.