1. The definition of a trademark.
A trademark is a word or a combination of words, sounds, or designs that are used to distinguish your goods or services from other companies. For example, Nike’s trademarks include the “swoosh” design and “Just Do It” slogan. Trademarks should not be confused with other forms of intellectual property, such as (a) copyrights, which provide protection for literary, artistic, dramatic or musical works; (b) industry designs, which are visual features of shape, configuration, pattern or ornament, or any combination, which are applied to a finished product; or (c) patents, which apply to new inventions or any new and useful improvement to an existing invention.
2. A trademark protects your brand.
Owners go to great lengths to brand their business. A trademark protects that brand. Your trademark identifies your goods or services in the public’s mind and how they are perceived in the marketplace. Your business’ success depends almost entirely on the message you convey, and the image you project. Your trademark helps you establish a presence and enables you to stand out from your competitors. People tend to be drawn to familiar names and designs if they are associated with quality and reliability. Take Disney for instance.
3. Registering your trademark is important.
Trademarks provide legal entitlement to intellectual property. Registration of a trademark is direct evidence of ownership. This means that in a dispute, the other party will have to prove actual ownership of the mark, or prove that its trademark is distinctive and will not cause confusion for the public. A registered trademark provides the exclusive use of the trademark across Canada for 15 years, and is renewable every 15 years thereafter. Registration also helps prevent competitors from selling essentially the same products or offering the same services under a similar trademark, so the public won’t confuse your goods with your competitors’.
Take for example a lawsuit filed in 2013 by Canada Goose against Sears. According to Canada Goose, Sears is selling lower quality “knock-offs” of its high-end Kensington jacket. According to Canada Goose, the Sears Alpinetek jackets are so similar that at least one consumer has mistaken the Alpinetek for a Kensington. Both jackets are red, 3-quarter length, have fur-trimmed hoods, and have circular logos on the top of the left arm. The logo designs are different apart from being circular, as shown below. In response, Sears noted that its brand was quite distinct from Canada Goose’s, and that many brands use circular logos, which Canada Goose could not claim it invented. Do you think the logos are similar enough in the circumstances to constitute trademark infringement?
4. Know the difference between trademarks vs. trade names.
It is important for business owners to understand the difference between trademarks and trade names. Trade names are names under which a company runs their business. A trade name can only be registered under the Trade-Marks Act if it is also used as that business’ trademark; that is, to identify its goods and services. If a business uses an unregistered trade name, and another business subsequently applies to register a similar trademark, the registration may be opposed. Even if the trademark becomes registered, the other company may file a lawsuit asking the court to strike it.
An example of this potential issue is illustrated in the case Woodpecker Hardwood Floors (2000) Inc. v. Wiston International Trade Co.. Woodpecker Hardware was granted an interlocutory injunction preventing Wiston from using the word “woodpecker” when selling products, until the Court had made a final decision on the matter. Wiston unsuccessfully appealed the injunction. Both companies sell hardwood flooring products. Woodpecker Hardwood had used the trade name “Woodpecker” from at least 2000. It did not register “Woodpecker” as a trademark. Wiston was incorporated in 2009 and operated as Wiston until 2013, at which time it registered logos, insignia, and word marks, some of which contained the word “woodpecker”. Woodpecker Hardwood sued Wiston for “passing off, or attempting to pass off”, their products “in such a way as to cause confusion between their wares and services and those of [Woodpecker Hardware]”. Woodpecker Hardwood also sought a declaration that Wiston’s trademark was invalid. As of the date of this article, the matter was still ongoing.
5. It’s Important to know the process, and where to find help.
The very first step any business owner should take when preparing to register a trademark is to conduct a preliminary search through the Canadian Trademarks Database. The search will help determine whether your trademark could cause confusion with one already registered. According to the Canadian Intellectual Property Office (“CIPO”), some factors to take into account include (a) whether it looks or sounds like, or suggests a similar idea, to other trademarks; and (b) whether the trademarks are used to market similar goods. Trade names may be recorded separately in each province under provincial registration; therefore, there is no central inventory containing all current trade names. These searches may be complex, and use of a registered trademark agent is recommended.
Once your preliminary search is completed, you may submit your application to CIPO. Various fees apply throughout the process. Once CIPO has received your application, it will be reviewed. You may be asked to provide additional information. Once the application process is completed, CIPO will acknowledge receipt of your application and will assign a filing date. This date is important in the event of a dispute, as it may be used to determine who sought registration first. Your application is then added to the Database as a pending trademark. The next step is an examination by CIPO of your trademark to determine whether there are any conflicts with existing or pending trademarks. Your trademark is also examined for compliance with the requirements set out in the Trade-marks Act. CIPO will publish your application in the Trademark Journal, leaving time for opposition, or challenges, to your application by others. If an opposition is submitted, there will be a determination by a CIPO officer. If no opposition is filed, your application is allowed and your trademark is registered. This is a simplified explanation of the process. To learn more and obtain assistance, please refer to CIPO’s Guide to Trademarks.
Please note: This article is for information only, and should not be relied upon. It is not intended to be legal advice, nor is it a substitute for legal advice. Every situation depends on its circumstances. The law changes rapidly and often without notice. If you have a question or concern, you should consult a lawyer or registered trademark agent.
