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.
- 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.
- 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.
- 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.
The following registrability criteria need to be met in order to render that trademark registrable:
- It must not be clearly descriptive of the wares or services themselves, nor deceptively misdescriptive;
- It must not be a generic term;
- It must not be primarily merely the name or surname of an individual who is living or recently deceased;
- It must not falsely suggest a connection with any living or recently deceased person; and
- 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.
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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