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Trade-mark FAQs

Trade-marks help to protect and promote brands.

What is a trade-mark?

Trade-marks are words or symbols (or combinations of words and symbols) used to distinguish the wares and services of one organization from those of another. They can include brand names, such as Nike, symbols, such as the Nike swoosh, and slogans, such as 'Just Do It'. They are valuable intellectual property rights which assist organizations in making their brand known.

McMaster University uses trade-marks to distinguish research, products and programs where the university has demonstrated expertise. Trade-marks help to protect and promote the McMaster University brand.

What rights does trade-mark protection give you?

Trade-mark registration gives you the exclusive right to use the trade-mark throughout Canada and the right to stop others from using an identical mark or a confusingly similar mark within Canada. Trade-mark owners also have the right to license the trade-mark to others, so that the mark can be used in franchising or other ventures as the owner sees fit.

Do I have to register to get trade-mark protection?

Not necessarily! You can develop 'common law' trade-mark rights just by using a mark. However, common law trade-mark rights are limited to the geographical area in which they have become known so that you may only get protection in a particular city, or province, depending on the extent of your mark's reputation. By contrast, registered trade-marks give you for the most part, protection nationally. Additionally, it is much easier to prove your rights when you have a registered trade-mark.

How long does trade-mark protection last?

Indefinitely. Registered trade-marks will remain protected provided that you pay the renewal fees every 15 years and you continually use the trade-mark in association with the wares and services for which it is registered. Unregistered (common law) trade-marks remain protected as long as the mark remains in use and its reputation remains known.

How do you register a trade-mark?

Registration is obtained by the filing of a formal application with the Canadian Trade-marks Office.

What if I want to protect my trade-mark outside Canada?

Trade-marks are protected at a national level only. As such, trade-marks registered in Canada are only protected in Canada. However, it is possible to protect trade-marks internationally. The MILO Intellectual Property Administrator is able to provide advice regarding international protection options.

I have a great trade-mark, what should I do now?

Contact MILO's trade-mark agent and intellectual property administrator.

 

How does the University protect trade-marks?

McMaster generally protects its trade-marks using the Official Marks provisions of the Canadian Trade-marks Act. This section allows a university to obtain Canada-wide protection with relative ease. By applying for publication of official marks, McMaster prevents other organizations from registering or using similar trade-marks. Official marks have the added benefit of being only subject to a one-time application fee.

What considerations should I think about when deciding whether to apply for a trade-mark?

Many factors are involved in deciding whether to formally protect a trade-mark. Some considerations include:

  • the length of time the trade-mark has been used and is going to be used
  • the importance of the trade-mark to your particular programs and/or products
  • your budget
  • the uniqueness of the trade-mark

Deciding to protect a trade-mark is a business decision that must be judged on a case-by-case basis. MILO's Intellectual Property Administrator is able to advise you on many trade-mark issues.


What is the process for registering a trade-mark at McMaster?

Step 1 -Trade-mark search

MILO will undertake a brief search to determine if the proposed trade-mark is currently being used by another organization or is confusingly similar to another organization's mark. This search is important to determine if the proposed trade-mark is likely to infringe any other organization's intellectual property rights.

Step 2 - Prepare and file applications forms

MILO's IP Administrator will prepare all documents needed to apply for trade-mark protection in Canada. You will be required to provide the following information:

  • Date of the first use of the trade-mark (e.g. the day you made a brochure available or sold your first product)
  • A copy of any design, drawing or logo in black and white no larger than 7cm by 7 cm (2 ¾" by 2 ¾")

Step 3 - Review and publication by the Registrar of Trade-marks

Once the application is filed, the Canadian Trade-marks Office will review and publish the application in approximately six to eight months. The publication and registration certificate will then be provided to the University as proof of the protection of the trade-mark.


How much does it cost to register a trade-mark at McMaster?

Official Mark Applications

  • $500 government fee per Official Mark application
  • $1000 administrative fee for the first Official Mark filed
  • $ 500 administrative fee for each additional Official Mark application filed at the same time.

Regular trade-mark Applications

  • $1500 administrative fee per trade-mark application
  • $500 - $800 in government fees for each trade-mark application