Protecting Your Brand: Understanding Business Name Protection

Registration in the BC Registry

When sole proprietorships or partnerships register their name with BC Registry Services, this provides notice of the use of the name but does not necessarily prevent another business from using it. Likewise, a corporation carrying on business under another name can register a “doing business as” or “operating as” name, but again, this registration is only for identification purposes and does not protect the name.

A corporation that has reserved a name with the BC Corporate Registry prior to incorporation does not receive proprietary rights in the name either. The approval process ensures that the proposed name complies with statutory naming requirements and is not identical or confusingly similar to an existing B.C. company, but does not compare it against registered trademarks or the federal corporate registry. Thus, registration does provide some limited protection against another B.C. corporation or a corporation incorporating extra-provincially in B.C. from registering a similar or identical name, but not as much as one might assume.

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Registration in the Federal Corporate Registry

In contrast, a federally incorporated company is entitled to carry on business in every province under the same name; if a company is planning to carry on business in more than one province, incorporating federally can be advantageous in this regard. The federal name reservation process includes a NUANS name database search, as well as provincial corporate registries and trademark registries, so it is more likely that an approved business name will be distinctive. This also means that having a name registered in B.C. can potentially prevent a federal company from incorporating a similar name.

Registering a Trademark

Only trademark registration provides exclusive rights to use your trademarked name or logo throughout Canada. Because of the complexity of the underlying trademark law and the technical requirements of the application process, it is not recommended for clients to attempt their own trademark registrations and it is advisable to seek the advice and services of a registered trademark agent. The process is lengthy and timing of registrations can be important; if you choose to register a trademark, sooner is better.

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What if two businesses have the same or similar names?

Name use may be challenged by a registered trademark holder or prior user of the name. If a name is so similar to another already in use that it may confuse the public, the business name may well have trademark protection at common law and the new business could be vulnerable to a passing-off action if it is offering similar goods or services. It may also be the subject of an infringement action under the federal Trademarks Act, and in either case, the result could be damages being assessed and an order to discontinue its use – for a recent and interesting example of an infringement decision involving a B.C. business, see Subway IP LLC v Budway, Cannabis & Wellness Store, 2021 FC 583.

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How can I ensure my business name is unique?

At the outset of your new venture, there are several types of searches that can be performed to reduce the risk that your desired name is similar to an existing name, may be rejected by the registry, or run afoul of existing trademark rights. These can be informal internet, phone book, or trade publication searches, or more formal searches of the federal government’s NUANS system or trademark registry. Our experienced corporate lawyers are always happy to assist you with this process and answer any questions you may have.

© Linley Welwood LLP. The contents of this article do not constitute legal advice. Readers should seek legal advice in relation to their own specific circumstances.