Since filing a trade-mark registration costs more at the outset than NOT filing it, and trade-mark rights really begin with use of the trade-mark in commerce rather than the filing, there has to be a good reason.
In fact, I can name six!
1. Prima facie evidence of ownership
2. Public notice of rights (on the Register)
3. Registered trade-marks are a clearly identifiable asset in licenses and purchase agreements.
4. More ways to attack infringers, passers off, and other disreputable parties.
5. Looks shinier / more professional
6. You can use the registered mark as a priority or foreign registration/use basis in other jurisdictions.
Maybe you have other ideas; please comment if you do…
I came across this reference as I was stumbling through, or rather DRAGGING myself through, the Canadian Trade-marks Examination Manual. It is quite interesting that when one files a trade-mark application, your statement of entitlement suggests that you are not infringing any other law! Hot buttons include the Canada Post Corporation Act; The Bank Act;
The Act to incorporate The Canadian Council of the Girl Guides Association;
and An Act for the protection of the Dionne Quintuplets;
The Consumer Packaging and Labelling Act;
The Competition Act;
The Food and Drugs Act; and
The Precious Metals Marking Act.
Now I’m not an expert in this field, but I was asked by a colleague recently if he was allowed to put a competitor’s product name in his Google Adwords. The answer, surprisingly, is YES. Here is a link to a case that indicates you are in your rights to lure people looking for product A to your site selling product not-A.