The Benefits of Having a Trademark Agent in Your Corner

Trademarks can be created in a variety of ways, they can be a word, design, number, two-dimensional or three-dimensional form, sound or colour, or a combination of two or more of these elements. Trademarks are also designated into categories, they can be ordinary marks, distinguishing guises, certification marks or official marks. Determining the best methods to protect your intellectual property requires a firm understanding of Trademark and Copyright Law which is how a registered trademark agent can assist you..

What is a trademark agent?

In Canada, registered trademark agents must have a thorough knowledge of the Trademarks Act as well as the related rules, jurisprudence and Trademarks Office practice and are the only professionals permitted under the Trademarks Act (RSC 1985 c.T-13) to represent and act on behalf of trademark owners to obtain trademark registrations before the Trademarks Office. While some trademark agents may also be lawyers, this is not a pre-requisite for becoming a trademark agent.

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

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

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

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