Category: About Trademarks

You probably come across the ® symbol multiple times a day on products whose branding is protected under federal intellectual property laws, but do you know what a trademark is or how to go about protecting it?

A trademark is any type of a word, phrase, mark, logo or the like which is used to differentiate your products or services from those of others. It is important for a company to not only understand what trademarks are but also to have a plan for the protection and expansion of their brand over time in the marketplace.

Traditional trademarks included “word marks” as well as designs or logos applied to the sale of products or services by an owner.  Word marks would include corporate names, product names, as well as advertising taglines and the like.

Trademarks can take many forms including words, numbers or letters, logos or designs, slogans, colors, smells, product or packaging configurations or trade dress, sounds, or other similar items.  Legislation in Canada and in most other countries defines a trademark as any kind of a mark or indicator which is applied or used in relation to a product or service for sale, to identify or distinguish the product or service in the eye of the consumer from those of other parties in the marketplace.  Beyond word marks and logo or design marks there are expanded categories of trademarks which can be protected in so far as they also provide a source indication to the consuming public.  For example, color is a type of a trademark which can be registered in Canada.  Two examples of a color trademark which can usually easily be understood are John Deere green and Caterpillar orange, for application to equipment in the channel of trade of those particular companies.  Those colors are used by those companies to indicate in the mind of the consumer the source or quality of their product.

There are at least three “legal” categories of trademarks which it is important for you to be aware of on an ongoing basis under Canadian and similar equivalents under international laws.  These include regular trademarks, certification or collective trademarks, and in the Canadian context public authority trademarks.

1. A regular trademark would be a word mark or logo or design of the like which was used by a regular corporate entity as a trademark in respect of a certain product or service.  Unregistered trademarks would typically all qualify in this category as well.
2. The second category mentioned above, certification trademarks, is provided for under the trademarks legislation in Canada and elsewhere which is used in a licensing or certification scheme to effectively indicate to members of the public not necessarily the source of a product or service but rather that the particular product or service is certified to meet a particular standard.  The standard, in the registration context of the certification mark, is defined in the application and can be related to the quality of the product or service, the method of manufacture, location or region of origin of the product or service, or some other characteristic.  One key restriction to the use of the certification mark is that the owner of the mark itself cannot be the source of goods or services which are marked with that certification trademark.
3. A final category of trademarks which is outlined here for informational purposes are public authority trademarks.  This is a creature of the Canadian trademark legislation which you will potentially encounter from time to time in clearance of your own regular or certification trademarks.  Public authority trademarks are registered by a governmental authority in Canada pursuant to Section 9 of the federal Trademarks Act.

Another extended category of trademarks beyond color is that of the actual shape of the product or packaging. This is sometimes referred to as “distinguishing guise”. Examples of distinctive shapes of products which have been registered before the Canadian Intellectual Property office include the well-known historical glass Coca-Cola bottle, the Heinz catsup bottle etc.

Common law rights

It is not necessary to register a trademark to accrue some rights in Canada in that mark within your channel of trade.  Simple use of the trademark in the sale or normal course of business will accumulate some rights in favor of the owner.  It is often times the case that trademarks are first used on a common-law or unregistered basis by companies and then subsequently registered as a measure of “insurance” or rounding out the portfolio of rights owned or identified as essential by the company to their ongoing operation.  There are numerous procedural advantages to taking advantage of the federal trademark registration system in Canada which include the fact that by performing a registration at the applicant/registrant creates a bar in the federal trademark registry to someone else coming along after the fact and registering a confusingly similar trademark.

REGISTRABILITY

The following registrability criteria need to be met in order to render that trademark registrable:

1. It must not be clearly descriptive of the wares or services themselves, nor deceptively misdescriptive;
2. It must not be a generic term;
3. It must not be primarily merely the name or surname of an individual who is living or recently deceased;
4. It must not falsely suggest a connection with any living or recently deceased person; and
5. It must not be “scandalous, obscene or immoral”.

The second prong of registrability involves the consideration of potential confusion with any previously filed or registered marks in the same channel of trade.  The rights of a trademark owner are conferred by the Trade-marks Act through registration of the trade‑mark, and include the exclusive right to use of the trade‑mark throughout Canada in respect of the wares or services set forth in the registration, subject to adjudication.

TERRITORIAL RESTRICTIONS

A trademark registration only protects the owner in the jurisdiction within which it is registered.  In an exporting scenario in particular it is fairly important to consider the clearance and protection of your trademarks in your foreign markets as you develop your export strategy, by way of protecting yourself against not only in market infringement by third parties but also protecting yourself in terms of the possibility of any disintegration of any local distribution arrangements etc. so that you are not left in a position that a third party has any rights in your trademarks in those foreign countries or markets.

ONGOING USE REQUIREMENT

Use of a trademark in the ordinary course of business is a key factor that will provide the ongoing basis for your rights in a particular market.  Registering a trademark can overcome to a degree the instant need for use but in order both to maintain a registration in most cases as well as to maintain your rights in an unregistered common law trademark, it is necessary for you to “use” it in the ordinary course of business which is to say that it is necessary to mark the trademark on products or services or advertising thereof in the ordinary course.  It is necessary also to maintain and/or to be able to produce from time to time as required evidence of ongoing trademark use, in support of your registrations or as required evidence in an enforcement proceeding.  Determining what is the appropriate “date of first use” for use in registration proceedings is another key basic concept.  The date which will be used is dependent upon whether the trademark is used in respect of products, or services, or both.

Although continuous use in the normal course of trade may often involve periods of non-use, any non-use that is outside of that occurring in the normal course of trade could be sufficient to defeat an application for registration.

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Once you have selected a new trademark it is important to do a trademark search to understand if there are problems in the marketplace which could inhibit your launch or adoption.  The two key items which we can consider in the preparation of a trademark search are the registrability of the trademark, that is to say whether or not the trademarks office in the country in question would have any issue with the granting of a trademark registration in respect of a particular proposed trademark, and whether there are any issues with the adoptability of the trademark in that marketplace. Adoptability is such a key issue since in many cases it may be possible to obtain a registration based on the status of the federal trademark register in the country in question, but there may be unregistered trademark rights in that marketplace which create the infringement or adoption risks which a client should know about in advance of finalizing their strategy.

It is possible for trademarks to coexist in the marketplace if they are used in different channels of trade and so to the extent that other trademarks exist that are visually or orally similar to your own potential trademark knowing the channel of trade in which you propose to use it is important.  Different types of trademark searches can be conducted for different purposes.

TYPES OF TRADEMARK SEARCHES

KNOCKOUT SEARCH

Primary purpose:  Initial market scan

A trademark search of this nature is intended to focus around identifying trademarks that are either identical in spelling or very similar in spelling, with limitations to the channel of trade which is included in the search.  The knockout search will typically comprise a search across all channels of trade for identical spellings and a limited number of additional queries with modifications in the search terms to cover similarly spelled trademarks and other trademarks of interest within the channel of trade.  The queries that are used in the knockout search are computer generated and so there is not quite the same amount of depth in the search as a complete register search outlined below, but if what you are really after is a snapshot of the state of the trademark register and how any items in the register might affect the registrability of your proposed trademark, this is oftentimes a good way to start.

REGISTER SEARCH

Primary purpose:  Understand registrability of the trademark

The next option which is available in terms of assessing the registrability of a trademark is to conduct what we would refer to as a complete “register search”. A register search, as inferred by its moniker, still comprises a search of the Canadian trademark database to identify any trademarks which might be relevant to the registrability of your proposed trademark within your channel of trade. The primary difference between a register search and a knockout search is that the query strategy on the register search, as well as the analysis and generation of the opinion, is done manually rather than by the summary auto-generation type of a search which is used in a knockout. The queries which will be executed in the preparation of a complete register search such as this will include the necessary queries to cover any trademarks of similar connotation but different spelling, or looking for roots and constituent elements of the proposed trademark and other trademarks within the channel of trade, spelling variations etc. the opinion that we will provide on this type of a search will be a legal opinion as to the registrability of your proposed trademark over the contents of the search report.

COMPREHENSIVE SEARCH

Primary purpose:  Understand registrability as well as adoption risks, if any

The final type of trademark search which we can conduct we refer to as a comprehensive search as it encompasses more sources with a view to providing you with an opinion not only as to the registrability of the trademark [to which pending applications and issued trademark registrations are relevant items] but also to provide you with an opinion as to the existence of any infringement or adoption risks in the marketplace beyond registrability. The circumstance that this type of a search is intended to minimize is the one where there may not be any impediment to registrability on the Canadian register and on that basis we may be able to provide a clear opinion on registrability, but there may be one or more infringement risks in the marketplace by virtue of someone else having a previous use of a similar trademark on the same channel of trade that is not registered, or something along those lines.

Consideration of adoption and infringement risks is a very important layer of diligence, in addition to a registrability analysis, so that you do not seek to register a trademark that would necessarily cause confusion and potentially infringement liability on your part vis-à-vis a third party in the marketplace.  Even though a trademark may be registrable, there may be common-law usages or other competing positions in the marketplace which, as a result of their status, may pose a problem in terms of a previous use or priority position in the marketplace in your channel of trade.

INTERESTED IN LEARNING MORE ABOUT TRADEMARK SEARCHING?

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Many companies are interested in knowing what the trademark registration process looks like, before embarking on a filing project.  The following is a visual overview of the Canadian trademark registration process, and the approximate time frames associated with the various steps:

1. Trademark search:  the first step in the trademark registration process is typically to conduct some clearance or searching, to determine if there are any previously filed or registered trademarks or other relevant items in the resources that are searched by the trademarks office that would pose problems to the registration of your trademark.
2. Filing a trademark application: if the results of the trademark search step are positive candidate is determined to proceed with the protection of your trademark, a trademark application is filed before the Canadian Intellectual Property Office.  The trademark application outlines the details of your claim to rights in the trademark, including delineating the classes of products or services in respect of which you wish to protect the trademark, and the details of any prior use etc.
3. Examination of the trademark application: following the filing of a trademark application by an applicant, an internal examiner at the Trademarks Office will conduct an internal search of the records of the office to determine if in their view the trademark is registrable within the channel of trade outlined in the application, both in terms of the general registrability criteria outlined in the Trademarks Act, as well as in terms of any prior rights in the trademark register which may indicate a possibility of consumer confusion.  If the Examiner determines there are issues in terms of registrability, they will issue an objection and the applicant has an opportunity to respond.
4. Approval and advertisement: following the examination of your application if the examiner is satisfied that the trademark is registrable for use by the applicant in respect of the wares and services outlined in the application they will issue an approval notice.  Following the approval notice there will be some formalities completed to allow for publication of the application in the Trademarks Journal.  Publication of the application provides public notice of the details of the application as well as the fact that the Office has determined the application and the trademark to be registrable.
5. Public opposition of the application:  Publication of the trademark application provides an opportunity for members of the public who may feel that they have conflicting or superior rights to a confusingly similar trademark in the same channel of trade, or who feel that there other bases on which the trademark application is not registrable, to file an objection or an “opposition” to the application.  There is a public opposition period of two months following the publication of the trademark application, within which an opposition can be filed.  If an opposition is filed the opposition process can take at least 18 months to be resolved.  If no opposition is filed, the matter will move forward to allowance.
6. Finalizing the registration: Following the expiry of the public opposition period in respect of a trademark application, the last step of the trademark registration process is for the applicant to finalize their registration by payment of any final fees and satisfying any other final formalities.  Once the registration is issued by the Canadian Intellectual Property Office, it is renewable in 10 year terms.

You need to file your trademark application in whichever countries or regions you wish to be protected but there is some level of international cooperation between countries and regions in terms of providing priority rights etc.

FOREIGN TRADEMARK REGISTRATION FILING BASIS

In many countries it is possible to file application for protection of a trademark based upon registration or adoption and use of the trademark in a foreign jurisdiction – for example you can file a trademark application to protect a trademark in Australia that has to date been registered and used in Canada.  This gives us the ability in certain circumstances to protect trademarks that are not yet in use and there is no particular market entry plan for a trademark in the foreign market, but you wish to preserve your rights in the trademark and seek protection as quickly as possible.

PARIS CONVENTION

What this international treaty allows is for us to file an application in Canada and to defer foreign filings for up to six months without losing your filing priority, since what we can do within that six month filing window is to file in other jurisdictions of interest and claim rights and priority based upon your earlier Canadian filing.

If you wish to be certain of the availability of a trademark in multiple countries and you plan on relying on a Paris convention filing strategy it is potentially relevant to seek to clear the trademark in all countries of interest at the time of initial searching.

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