Protecting what makes you unique

The purpose of a trademark is to identify the source of origin of products or services from those of others.  Traditionally, trademarks have consisted of  any word, name, symbol, design, numeral or any combination thereof.

 

Over time, due to the advancement of technology and the development of new marketing strategies that were unthinkable before, there has been a global trend for businesses to adopt more and more non-traditional trademarks.  Today, trademarks may include shape, sound, motion, scent, texture, taste, holograms, three dimensional objects and color.  The sky is the limit – but the protection of trademark rights differs from country to country and non-traditional trademarks may not be registrable everywhere.

Adopting a trademark is more than simply selecting the brand under which you will sell your products or promote your business.

 

  • Should you register your trademark?
  • What is the difference between a trademark and your corporate identity?
  • Should you use the ™ or ® symbol next to your trademark?
  • Have you considered the legal implications of promoting your products and services on the web in other countries?
  • If you are letting others use your trademarks, do you have a licensing arrangement in place to protect the distinctiveness of your mark?

These are just a few examples of considerations that may affect the value and usefulness of a trademark to your business.  

Shapiro Cohen LLP assists you in determining the strengths of a trademark, understanding the fundamentals of trademark protection and in gaining a better understanding of how to maintain the value of your trademarks over time.

 

Are you thinking about adopting a new mark for distinguishing your products or services from those of competitors?  We will help you clear the mark, assess its strength and seek protection for it in Canada and wherever else you do business.  Have you become aware of another business using the same or similar mark?  We will assist you in determining the best way to preserve your rights and if necessary, to enforce them against others, either through negotiations, court action or alternative dispute resolution proceedings.  Are you being sued?  Come and meet with us to discuss your situation – let us help you find the better business approach to dealing with this.

FAQ & Case Studies

Trademark FAQ

Why register your trademark?

Registration is an important way to protect and increase the value of your trademark, as it:

  • provides presumption of ownership
  • gives you exclusive rights across Canada for 15 years even if you only use the mark in a restricted geographical area
  • may be renewed indefinitely by 15-year increments upon payment of the government fee
  • allows you to sue for infringement if others adopt and use a trademark or trade-name likely to cause confusion

What cannot be registered?

Under the Trademarks Act, the following is generally considered not registrable:

  • names and surnames
  • clearly descriptive marks
  • deceptively misdescriptive marks
  • words that denote a geographical location commonly known to be the place of origin with the goods and/or services associated with the trademark
  • words or designs that are considered confusing with a previously registered trademark or pending trademark
  • words or designs that are identical to, or nearly resemble a prohibited mark 

In some cases, exceptions may apply. Speak with one of our professionals.

Who can apply for the registration of a trademark?

Individuals, associations, organizations, corporations or any other legal entities may register a trademark. The only restriction is that a trademark may not be registered in the name of two or more entities, unless these entities form a legal entity of some sort, such as a partnership or a joint venture.

What information do you need to file a trademark application?

A trademark application must contain the:

 

  • name and address of the owner
  • identity of the trademark, including a sample or other depiction of a non-traditional type of mark (design, sound, etc.)
  • list of goods/services described in ordinary commercial terms
  • a statement that the applicant intends to use the trademark in Canada
  • priority claim (optional)

One or more bases for registration, the most common are:

 

  • use in Canada, in which case the date of first use must be provided
  • use and registration in a foreign country
  • proposed use in Canada
  • making known in Canada

What is priority?

A priority claim enables a trademark owner who filed an application in a country to subsequently file an application for the same or substantially the same mark in other countries within six months and to have it considered filed as of the earlier filing date.  It allows a trademark owner to delay its filing strategy in other countries for up to six months and to retain their earliest filing date.

What is the process for registering a trademark in Canada?

A trademark application is filed with the Canadian Intellectually Property Office (CIPO) with a government filing fee. The application is awarded an application number and filing date, and is indexed on the register for searching purposes.  It is then reviewed by an examiner to determine whether the trademark itself and the contents of the application comply with the requirements of the Trademarks Act and Regulations. 

 

In particular, the examiner will identify any potential registrability problems, i.e. whether the mark may be considered clearly descriptive or deceptively misdescriptive of the associated wares or services, or whether it is confusing with any prior application or existing registration.  The examiner will also review the description of wares and services to ensure it is set out in ordinary commercial terms, as required by the Act.

 

Any objections made against the trademark itself or the contents of the application will be raised in an office action and a specific time line will be set to respond. Once the examiner is satisfied that all objections have been adequately dealt with and there are no further issues, the application will be advertised in the Trademarks Journal for opposition purposes.

 

If no third party opposes the application, it will move on to allowance and subsequently registration upon payment of the government registration fee.  In the case of applications based on proposed use of the trademark in Canada, the applicant must also submit a declaration that use of the mark in Canada in association with the wares/services set out in the application has commenced since the filing date.

Does registration in Canada protect my rights in other countries?

No. If your goods or services are sold in other countries, or you intend to expand your sales into other countries, you should consider applying for a registration in each jurisdiction where you conduct or intend to conduct business.

 

Our experienced professionals are also here to guide you through the process of obtaining foreign registrations.  

Foreign applicants – what do you need to know?

Priority is not a claim to register a trademark in Canada. It only provides a priority date, which is considered to be the effective date of filing of the application.

 

Canada is not part of the Madrid Agreement.

 

Goods and services must be defined in ordinary commercial terms. Canada has not adopted the International Classification of Goods and Services under the Nice Agreement.

 

Use is key for obtaining a trademark registration in Canada, whether such use occurred in Canada or the applicant’s home country.

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Questions?
If you have any questions please call 613-232-5300 to speak to a professional or email us at ProtectMyIP@shapirocohen.com.

 

Trademark Case Studies – global

There is a trend amongst businesses to move their manufacturing operations to China.   A developer of electronic devices spent considerable time assessing the benefits and advantages of outsourcing its manufacturing operations to China and decided that it was commercially the best way to go for his business.  Unfortunately, no consideration was given to whether trademark protection should be sought in China or of the risks associated with the lack of appropriate trademark protection in that jurisdiction.  He ended up being sued in China and ordered to halt the production of goods, which almost put him out of business.

 

The fact that goods manufactured in China are goods designated for export only and not to be sold in China, does not prevent infringement from taking place in China if another party has obtained a Chinese trademark registration for the mark affixed to your goods.  Likewise, you run the risk of paying a significant fine if you mark your goods that are manufactured in China with the notice ® when you have no trademark registration in China but only a registration in the country in which the goods are to be sold.

 

Protecting your IP does not mean simply protecting your IP in countries where you sell your products or offer your services.  If some aspects of your business activities are taking place in countries other than Canada, consult your IP professional to make sure that your business plans do not fall apart due to a lack of protection in those other countries.

An American company had been selling a clothing line for many years in the United States when it decided that it was time to expand its line to the Canadian market.  Unfortunately, by the time it decided to apply for trademark protection in Canada, a Canadian corporation had already applied for the same trademark in association with clothing as well.  The American company had to spend considerable time, energy and resources to eventually come up with a settlement that gave it the right to use its mark in Canada.

 

This problem could potentially have been avoided if proper steps had been taken to protect the trademark in Canada at an early stage, by relying on the use and registration of its trademark in the United States in an application for the mark in Canada.  If successful with this approach, the company would have been able to secure the rights to use the mark in Canada for a fraction of the cost.

 

This highlights the importance of consulting your IP professional whenever you plan to expand the distribution of your products or the offering of your services to other countries.  Don’t wait until you are ready to hit the marketplace – plan ahead to save yourself a lot of headaches!

A corporation obtained a trademark registration to designate its real estate services.  As part of its business model, it allowed brokers to use the trademark in their own advertising and before long, it was no longer possible to identify the source of origin of the services offered under that trademark.  When faced with a competitor using the same trademark, the corporation was no longer in a position to stop the competitor’s usage.  The investment the corporation made in protecting and promoting its trademark was irrevocably lost…  and its mark ended up in the hands of everyone to use in the marketplace.

 

The purpose of a trademark is to identify a single source of origin.  The moment your trademark points to two or more entities as the source of origin of the products or services, you run the risk of losing your trademark rights.  Rights in a trademark accrue to the trademark owner only if there is a proper licensing arrangement in place with quality control requirements.  If as part of your business model you permit third parties to use your trademark, even if these parties are related to you, then make sure to talk to your IP professional so that what is yours… remains yours!