Should I register my trademark before selling my business?

Registering a mark is optional. The Canadian Intellectual Property Office (CIPO) says you do not have to register a trademark. This page sets out what registration adds under the federal Trademarks Act and what an application involves, so you can put better questions to a trademark agent or lawyer. It does not say whether you should apply. The Act is federal, so this is not a rule that changes with the province.

What registration adds

Under s.19, the registration of a trademark in respect of any goods or services, unless shown to be invalid, gives the owner the exclusive right to use it throughout Canada in respect of those goods or services. That right is subject to sections 21, 32 and 67. The right is stated in respect of those goods or services.

What an application needs

Under s.30(1), a person may apply if they are using or propose to use, and are entitled to use, the trademark in Canada in association with those goods or services. Under s.30(2)(a), the application must contain a statement, in ordinary commercial terms, of the goods or services in association with which the trademark is used or proposed to be used. CIPO lists marks that cannot be registered, including a mark that clearly describes a characteristic of the goods or services, and one that is confusingly similar to a registered or pending mark. It also says the Registrar cannot do a search of trademarks for you, and suggests hiring a trademark agent to search trade names.

Transfers, registered or not

Section 48(1) says a trademark, whether registered or unregistered, is transferable, either in connection with or separately from the goodwill of the business and for all or some of the goods or services. Subject to the regulations, the Registrar registers the transfer of a registered mark on the request of the registered owner or, on satisfactory evidence, a transferee (s.48(4)). Under s.48(3), the Registrar records the transfer of a pending application on the request of the applicant or, on satisfactory evidence, a transferee.

Questions to take to an adviser

• Whether your name or logo can be registered, and whether a search shows a conflicting mark.
• Which goods or services an application would name.
• How the purchase agreement should describe each mark: registered, pending or unregistered.