Magazine Industry Resource Library
Law - Publishing

Daniel Urbas is a lawyer with Woods & Partners. His practice focuses on media law, intellectual property, e-commerce and litigation. He can be reached at

The contents of Publishing Law should not be construed as legal advice offered by Masthead or Mr. Urbas. Readers should consult their own lawyers before acting.

Column for October 2001

Trademark Law for Magazine Publishers


Magazines are jammed together onto narrow display shelves, each title peering over the head of the copy immediately in front, staring back at readers. A magazine's title is often the first way to attract new consumers to sample the contents of an issue and to remind regular readers where to return. Magazines not only strive to stand out by combining distinctive names and fonts in their titles but also to distinguish their editorial content.

In this two-part series, I will deal with trademark law and domain names. This month, I will outline key issues in Canadian trademark law and how magazines adopt and protect their trademarks. Next month, I will set out how magazines' trademarks compete with domain names on the Internet and what to do about it.


A trademark is a word, a symbol or a combination of both that is used for the purpose of distinguishing or so as to distinguish wares or services manufactured, sold or performed by the trademark owner from those manufactured, sold or performed by others. A trademark can combine a word as well as the way it is written. For example, the Masthead title appearing on the print and electronic issues combines the word Masthead and the stylized font familiar to its readers.

In contrast, a trade name is the legal or formal name under which any business is carried on, whether it is the name of a corporation, a partnership or an individual. Companies use trade-names to sign cheques and contracts. For example, North Island Publishing Ltd. is the trade name of the owner and publisher of Masthead magazine and Masthead is its trademark. A trade-name is not a trademark unless used as a trademark.

A single entity with a single trade name can use several trademarks. For example, Multi-Vision Publishing Inc. owns the trademarks Shift and Elm Street and recently acquired Saturday Night.

Two theories of trademark: source vs. character/quality

A trademark originally served to identify a single source for wares manufactured or services performed by a particular company. The concept of a trademark has now evolved to include the fact that trademarks also identify the quality or the character of wares and services. The actual source of trademarked wares or services may well be anonymous. Who knows the actual name of the company that makes Kit Kat chocolate bars? Customers seeing the trademark Kit Kat simply recognize the product and make the purchase. (Kit Kat used to be owned by the U.K.'s Rowntree and Company Limited but is now owned by Swiss-based Société des Produits Nestlé S.A.)

The source of the wares does matter but modern trademark law provides that the owner of a trademark can license the trademark for use by one or more third parties. However, under the license, the trademark owner must have direct or indirect control over the character or quality of the wares used or services performed in association with the trademark. If such a license exists and the owner does exercise that control, the use of the licensed trademark by the licensee is deemed always to have had the same effect as if the trademark was used by the owner.

Excluded trademarks

Some words cannot function as trademarks. For example, a word which is clearly descriptive in English or French of the character or quality of the wares or services in association with which it is used or proposed to be used will not likely qualify as a trademark. It would be difficult to register the trademark "Chocolate Bar" for a chocolate bar, for example. Massive use must be made of the word in order to qualify as a trademark and such use is relatively rare or limited to local areas.

A trademark cannot be the actual name in any language of the wares or services in connection with which the trademark is used or proposed to be used. Thus, the word for "magazine" or "journal" in any other language does not qualify as a trademark and cannot be exclusively reserved for use by a single magazine.

The trademark cannot be primarily merely the name or the surname of an individual who is living or has died within the preceding thirty years. The Courts look to how common the name is to see whether it can qualify as a trademark. Even then, massive use can generate the trademark for a family name. For example, consider Eaton, Sears, McDonald's. The best use of a family name is to coin a word such as Oldsmobile or Wal-mart.

These are just some of the restrictions. You should consult with a professional, such as a lawyer familiar with trademark law practice or a trademark agent, before investing large sums of money in developing a brand for your magazine. (Your local law society and the Canadian Intellectual Property Office can provide you with names of attorneys or trademark agents in your area who are knowledgeable about trademark law. Call your local law society or visit CIPO's list of trademark agents at here.)

Wares or services

Trademarks can be used in association with either wares or services. Publications, periodicals and magazines are considered wares whereas newsgathering and broadcasting are considered services. How you characterize your business matters because trademark legislation applies different standards for the use of a trademark for wares and for services.

For example, Canadian trademark legislation, namely the Trademarks Act, deems that a trademark is used in association with wares if, at the time of transfer of the property in or possession of the wares, the trademark is marked on the wares themselves or on packages in which they are distributed. Such a trademark notice can also be given in any other manner provided that notice of the association is given to the person to whom the property or possession is transferred.

In contrast, a trademark is deemed to be used in association with services if the trademark is used or displayed in the performance or advertising of those services. Therefore, a trademark for restaurant services is used if the trademark appears on a sign displayed above the entrance to the restaurant or on menus or in print or broadcast advertising for the restaurant. Narrowly speaking, the trademark legislation existing in Canada does not qualify advertising of wares as "use" of the trademark. Rather, the Courts will give some weight to the use of the trademark in advertising for wares but will likely qualify that advertising more as "making known" of the trademark rather than use.

The strength of a trademark depends not only on how distinctive it is but on how frequently the trademark appears on wares or in the performance or advertisement of the services. As a general rule, the longer and more often you use your trademark, the stronger its ability to distinguish your magazine from others.

Test for confusion

Trademark A is confusing with trademark B if the use of trademark A and trademark B in the same area would likely lead to the inference that the wares or services associated with those trademarks are manufactured, sold or performed by the same company. This is true whether or not the wares or services are of the same general class. Confusion can also occur between a trademark and a trade name, depending on the circumstances.

In determining whether confusion exist, the Courts have regard to all the surrounding circumstances, including the following non-exhaustive list of criteria:

a) the inherent distinctiveness of the trademarks and the extent to which they have become known. A trademark can be inherently distinctive if it is coined term such as Xerox brand photocopiers, Roller-Blade brand inline skates, Post-It brand adhesive notes or Kleenex brand facial tissue. On the downside, sometimes being too distinctive and first with a new product may lead to people assuming wrongly that your brand name is the actual name of the product. As well, adopting a word which has no relation to the wares or services can create a strong trademark. Consider the use of Wallpaper as a trademark for magazines.

b) the length of time the trademarks have been in use. The longer trademark A is used vis-à-vis trademark B, the better trademark A's chances are for establishing a stronger trademark reputation.

c) the nature of the wares, services or business. The more expensive a set of wares, the more likely a consumer will spend time looking at the product and distinguishing small differences between trademarks. A $1 purchase will generate less attention for a consumer than a $10,000 purchase. Some wares or services are usually bought by professionals whose jobs are to source wares for their entire company. For example, software managers who buy software worth thousands of dollars can and do look closely at the name of the companies in which they are about to invest so much money. As a result, the Courts may assume that the average professional software manager is capable of making fine distinction between trademarks sharing several common elements. To determine confusion, the Courts must examine the competing wares and services and identify who is the average consumer. A trademark used for chewing gum can be identical to a trademark used for retirement saving plans because a reasonable consumer would not be confused.

d) the nature of the trade. Some industries encourage consumers to develop the ability to distinguish between trademarks based on small differences . For example, in television, consumers see three-letter acronyms used to identify all broadcast services. Using television programming magazines, consumers readily distinguish between CBS and CBC and TMN and TNN. In addition, consumers will ignore certain generic terms added to trademarks such as the words News, Journal and Report used in the magazine industry in many titles. Adding these terms does little to distinguish your title from another.

e) the degree of resemblance between the trademarks or trade-names in appearance or sound or in the ideas suggested by them. Misspelling a trademark may change the meaning but not the sound. Writing different words with the same distinctive font will often attract the attention of another trademark owner.

Protecting the trademark

Some argue that a trademark reflects the goodwill of a business or the reputation of a business. Goodwill means not only your current readers, but also the ability of your trademark to attract new readers in the marketplace.

Trademark law protects two categories of persons: trademark owners and consumers. First, trademark law protects the owner of the trademark who has invested time and money in adopting and using a trademark to distinguish his or her wares or services from those of others. The protection enables the owner to stop others from using trademarks which would lead to confusion. Second, consumers must not be misled into buying wares or services which they mistakenly believe are associated with another source, quality or character. It is usually up to the trademark owner, though, to intervene to protect consumers who may be misled.

Use or registration

Trademarks can be obtained in either of two ways: use or registration. A trademark can be used extensively in the marketplace and the reputation or goodwill of the trademark is limited to the actual geographical area in which the trademark has been used. If you only sell your magazine in one province or in one city, the ability of your trademark to distinguish is likely limited to that area.

Another way to obtain trademark rights is to register a trademark with CIPO. (For a short guide on trademark registration procedure, visit CIPO's web site at here. It is recommended to use the assistance of a professional, such as a lawyer familiar with trademark law practice or a trademark agent, in order to consider and file an application.)

A trademark registration gives the owner of the registered trademark exclusive use of the trademark across Canada. The exclusivity is limited to those wares or services listed in the registration. Therefore, after a successful application to register your trademark for use in association with magazines, the registration would provide that you have exclusive rights across Canada for use of the trademark in association with magazines. The registration does not necessarily prohibit someone else's use of the same word or symbols in association with unrelated wares or services which cause no confusion.

"Extending/expanding the brand"

Many magazines have considered using their trademark with branded accessories and consumer goods such as t-shirts, jackets, baseball caps and leather goods as well as retail services and restaurant services. These initiatives are often referred to as "extending" or "expanding" the brand. The only limits to a magazine's entrepreneurship are the trademark rights established by other people.

Before launching your trademark into new areas of wares and services, look at who might have occupied the field before you. Don't assume that because you have been successful in print that your use of your magazine title with a new line of wares or services will not infringe someone else's brand. (For an informal search, try consulting CIPO's trademark database at CIPO web site at here). However, before acting or investing any money, consider asking a trademark professional for a trademark search and registrability opinion. Those professionals can review professionally generated search reports which summarize relevant government and public records in Canada. The professionals identify whether or not other entities or persons have registered similar or identical trademarks and can sometimes tell you what are the wares and services associated with those other trademarks.

Next month, we will talk about your magazine going online.