Copy Cats Can Hurt Your Business –
Are Your Brand and Ideas Protected?
By Robert Galloway
You have incorporated your business, you are providing a great product or service, and you have a catchy business name, brand, and slogan to attract customers, but how do you protect against your competitors misappropriating your slogan, brand, and other intellectual property to benefit from your goodwill? The answer lies with trademark.
What are Trademarks?
A trademark is a recognizable word, symbol, drawing, shape, packaging, colour, sign, design, expression or combination of the above used to identify and distinguish the product or services provided by your organization from those of a competitor in a similar market. Essentially, a trademark will direct customers to the source of the product or service and its quality and goodwill. When you obtain a trademark for your brand, this protection attaches to both the goods your organization sells and the services your corporation provides. Ultimately, a trademark is designed to attract customers, but also direct that customer to the source of that trademark’s goods and services. A trademark creates a mental link in the customers mind connecting the symbol or trademark to the source of the product or service. You want a potential client to look at your trademark and easily distinguish your product from the product of your competitors.
The protection of Trademark interest was drafted to protect both you and your customers. Trademarks assist customers in identifying the level of quality they seek in a product or service and receiving consistency in the products and services they purchase. Trademark owners are protected from commercial and reputational misappropriation by competitors. Registration of a trademark prevents your opposition from using your marks and brands in an attempt to benefit from the goodwill associated with your brand and product that you have generated. When you register a trademark, you are given the exclusive use of that mark in relation to your wares and services.
Trademarks can either be registered or unregistered. Although registering your mark affords you the highest level of protection, trademark is not an entirely statutory scheme and therefore, a mark or brand garners some common law protections even where it is not registered. Essentially, your common law rights arise in the trademark as soon as you begin using that mark in relation to your products and services. As such, even were you to choose not to register your mark, your mark and reputation would have some protections in association with your products and services. Unfortunately, an unregistered mark is only protected within the area where reputation has been built. As such, the rights and protection your mark is granted are limited to the geographic location in which the mark is used. An unregistered mark’s strength is in the reputation it has created in a certain regional area. For example, if you have an unregistered mark and your corporation is only known within the Niagara region, protection of your mark will only extend to within the Niagara region. Granted, a strong internet presence could expand the radius of your protection.
Conversely, when you register a trademark, it is entered into the Register of Trademarks, a registry of all trademarks that have been formally applied for and registered across Canada. Registration grants your trademark national protection and also serves as evidence that the mark is your intellectual property. Additionally, when registering, a comprehensive trademark search is completed to ensure you are not registering a confusing similar mark. Without completing such a search, you could potentially be infringing existing trademarks when selling your
Not all marks can be registered though. The Trademark Act sets out that certain trademarks are not registerable where the mark:
- Is a word that is merely the name or surname of an individual now living or who has died within thirty years;
- Is either clearly descriptive or deceptively misdescriptive of the character or quality of the goods and services in association with which the mark is to be used;
- Is the name in any language of any of the wares or services in connection with which the mark is used;
- Confusing with an already registered trademark;
- A prohibited mark according to the definition in the Trademark Act;
- A protected geographical indication, where the trademark is to be registered in association with a wine or spirit not originating in a territory indicated by the geographical indication;
- Associated or similar with Olympic and Paralympic marks.
Ultimately, when registering your trademark, the key is to avoid confusion with already existing marks. Where a mark is confusingly similar to a registered mark, unregistered mark, or pending trademark, an applicant’s registration could be refused. Additionally, the use of confusingly similar trademarks could result in potential litigation for trademark infringement. When determining whether a trademark is confusingly similar, you must take into account whether the trademark sounds or looks similar to another mark, suggest similar ideas, or is used in similar markets and associated with similar goods and services.
Registering Your Trademark
Provided your trademark complies with the requirements of the Trademark Act and Trademark Regulations, you can register your mark and may be granted the rights to that mark in association with your goods and services. Trademark registrations are valid for fifteen (15) years, after which time the trademark must be renewed and a fee paid.
Your application to register your trademark must cover all the goods and services you would like your mark to be associated with. When drafting your description of the goods and services your mark will be associated with, you should attempt to make it as broad as possible in order to allow your brand and business to grow and adapt. That being said, CIPO has set out guidelines outlining how trademark description should be drafted and will insist that overly broad descriptions be redrafted.
When making an application for a trademark, you must also state whether the trademark is already in use or is a proposed use. If you have already been selling your wares and services in association with your trademark prior to registration, this is an actual use. Where you are attempting to register a trademark, but have yet to use it in association with your wares and services, this is a proposed use. Where applying as a proposed use, you must indicate how the mark will be used and the date of first use.
If your registration application includes anything other than words or acronyms, you must include a formal drawing of the design being registered, making sure to specify the colouring of the design. The formal drawing should be in black and white and include a description of the designs colouring.
Lastly, when submitting an application, you must pay a prescribed filing fee. Registration costs and guides on Trademark Registration can be found on the Canadian Intellectual Property Office (“CIPO”) website.
As a part of the Lancaster Brooks & Welch Corporate and Commercial team, Rob Galloway can assist you in all aspects of your business legal needs. He may be contacted at 905-641-1551.