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The Name Game: Differences between a Corporate Name, Business Name, Domain Name and Trademarks
Corporate Name
Your business's corporate name (or company name) is the legal name of your corporation. This name must be used on all contracts, invoices, business licenses and orders for goods or services issued or made by your corporation.
A corporate name can be a numbered name or an actual word name.
You can choose to have a numbered name assigned by Corporations Canada if you are incorporating federally or by the Central Production and Verification Services Branch if you are incorporating in Ontario.
A corporate name can also be a word name, but the name must meet certain legal requirements. Generally, a corporate word name must be distinctive, must not cause confusion with other names or trademarks, and cannot include prohibited terms. A distinctive name distinguishes your company from others. For this reason, a name that describes the nature of the business, for example, Car Manufacturing Services Inc., will generally be considered nondistinctive. A corporate name must also not be misdescriptive and must not suggest a governmental affiliation unless one in fact exists. Your proposed corporate name must be searched against existing names using the Newly Upgraded Automated Names Search (NUANS). A NUANS report returns existing corporate names and registered trademarks that are similar or identical to your proposed name. Note that a NUANS report is much less comprehensive than a trademark search and opinion completed by a lawyer. There are likely registered trademarks in addition to those included in the NUANS report that are similar enough to your proposed corporate name that its use may present a legal risk.
It is important to understand that choosing a corporate name does not automatically mean that you have chosen a trademark that is clear and available for use in Canada. It is also important to understand that even though you may receive government approval to use a specific corporate name, you are not guaranteed that others will not use it or something similar. There are also no guarantees that someone will not sue you for passing off or trademark infringement if they believe your name is confusingly similar to their name or trademark. See the section on trademarks, below, for more information.
Business Name
You may carry on business under a name other than your corporate name (or company name). A business name is also known as a trade name. This is typically the name customers or clients know the business by. You may choose to do so when you have a numbered company but want to use a more memorable or catchy name to do business day to day. If you carry on business under a name other than your corporate name, then you must register that business name in the province or territory in which you carry on business.
Before registering a name in Ontario, you will perform an Enhanced Business Name Search which allows you to determine if your proposed name is already registered with Ontario Ministry of Government Services by another company. As with a corporate name, registering your business name does not necessarily provide you with the right to use the name as a trademark nor does it provide infallible protection against the name's use by a third party, nor will it guarantee that you will not be sued for passing off or trademark infringement.
Domain Name
A domain name is the domain portion of your web address. Before registering a domain name, you must first determine if it is available by conducting a search on the Canadian Internet Registration Authority (CIRA) website. If it is available, you must still determine if using that name would infringe a third party's trademark rights. A domain name may be a trademark or may incorporate a trademark. Therefore, you will want to conduct trademark and other online searches as described in the trademarks section of this article, below.
If you have been in business for a while but have not registered a domain name, and you discovered that there is use of domain names identical or similar to your trademark or trade name, you may be able to enforce your rights in your mark through domain name arbitration. In brief, domain name arbitration is governed by the Canadian Internet Registration Authority’s Dispute Resolution Rules, or CDRP, for .ca domain names; and the Uniform Domain Name Dispute Resolution Policy (UDRP) for .com names. For more information on domain name disputes, visit our additional resource on How to Enforce Your Rights in Domain Name Disputes.
Trademarks
Trademarks are used for a different purpose than corporate or business names. A trademark is a mark that is used to distinguish the goods and services manufactured, sold, or offered by your company from those goods and services of another person or company. By contrast, corporate and business names are used to identify your business itself. You can theoretically have a different corporate name, business name and trademark. For example, your corporate name could be 1234567 Ontario Inc., your business name could be Bakery X, and your trademark could be Sweet Treats used in association with baked goods and bakery services. Other trademarks worth filing include the name of products (e.g., Tim Hortons' ICE CAPP), slogans (e.g., McDonald’s I’m lovin’ it), or logos (e.g., the Nike swoosh logo).
Alternatively, you can have one corporate name that you also use as a trademark. For example, you can name your corporation Sweet Treats and use that same name as your trademark. However, as mentioned above, registering a corporate or business name does not automatically give you the right to use it as a trademark.
It is important to conduct some research before using a proposed trademark to ensure that you will not be sued by a current trademark owner. If you use a trademark that causes or is likely to cause confusion between your goods, services or business and the goods, services or business of another, you could be sued for passing off under the Canadian Trademarks Act. Further, if you use a trademark that has already been registered by someone else, then you could be sued for trademark infringement. To decrease your chances of being sued, you can conduct a trademark search on the Canadian Intellectual Property Office (CIPO) website to determine if anyone else has registered the same or a similar mark in Canada. You can also do online searches to determine if your proposed trademark is being used by anyone else in Canada, regardless of whether it is registered. This may include searching the NUANS database. Although greater protection is available for registered marks, the owner of an unregistered mark also has enforceable rights in that trademark and may take legal action against you. To ensure that you’re aware of all potentially conflicting marks, and the effect these may have on your ability to adopt and/or register your trademark, you may wish to consider hiring a trademark lawyer to conduct a search and provide an opinion on the registrability and/or availability of your mark. Trademark lawyers have the unique benefit of experience gained in the course of prosecuting countless applications for trademarks and are better equipped to assess whether an existing mark may be an obstacle.
If you plan on doing business in the U.S., you should conduct similar searches using the United States Patent and Trademark Office trademarks database.
To get the most protection for your proposed trademark, you can apply to register it with the Canadian Intellectual Property Office. Registering a trademark gives you nationwide protection and the exclusive right to use the trademark for the goods and services with which it is associated in Canada. As a registered trademark owner, you can prevent others from using the same or a confusingly similar trademark in Canada. Part of this work is done for you by the Canadian Intellectual Property Office when its examiners are reviewing applications for trademarks. Your registered mark would be cited against an application if the proposed mark may be confusingly similar. The applicant would then need to persuade the examiner that the mark would not likely be confused with your own or amend their application to obviate any likelihood of confusion, before their mark would be allowed to register.
Would you like our help with conducting a trademark search or registering a trademark for your business? Contact us now for a complimentary and confidential initial telephone appointment.
