WHAT ARE TRADEMARKS?
A mark (words, names, symbols, devices, sounds, smells, trade dress) used to distinguish the goods and services of one business from similar goods and services of all other businesses.
In Canada, it is possible to register the non-functional shape of a product or its packaging (called distinguishing guise, or “trade dress”).
It is also possible to register certification marks (i.e. marks used to demonstrate that goods and services of different companies meet certain criteria set out by the owner of the certification mark).
WHAT DO TRADEMARKS PROTECT?
Trademarks can protect: words (iPad); symbols and logos (the Nike swoosh); design (Mickey Mouse character); slogans (I’m Lovin’ It); sounds (MGM Roaring Lion sound, Nokia tune); the non-functional shape of the productor its packaging (Coca-Cola bottle); colour (Magenta color registered by T-Mobile).
It is important to understand that trademarks do not grant a monopoly over the words, symbols, taglines, etc. themselves.
What trademarks protect is a mental association between such words, symbols, and taglines and particular goods and services that the trademark owner offers under the trademark.
This is why the same word can be registered as a trademark by two completely different companies, as long as they sell products or services that are dissimilar.
WHAT IS NEEDED TO GET PROTECTION?
The mark must be distinctive (i.e., it must be used to distinguish the goods and services of one business from similar goods and services of another business), and not confusingly similar to another trademark.
WHAT TRADEMARKS DO NOT PROTECT
Trademarks do not protect: company names (unless they are used to distinguish goods or services); the generic name of goods or services for which the trademark is used (i.e., can’t use “apple” as a trademark for apples); marks that are clearly descriptive or deceptively mis-descriptive of the goods or services, unless the mark has become distinctive; personal names unless they have become distinctive as trademarks; functional elements of the product’s shape.
WHO ARE TRADEMARKS ENFORCEABLE AGAINST?
Anyone who uses the trademark in association with goods or services for which the trademark is registered or otherwise in a way that causes or is likely to cause confusion with the registered trademark.
WHAT CONSTITUTES USE?
WHAT ARE OTHERS PROHIBITED FROM DOING?
With respect to goods(wares), a trademark is deemed to be used if: the trademark is marked on the goods; the trademark is otherwise associated with the goods in the mind of the purchaser; the trademark is marked on the goods’ package; the trademark is marked on the goods or the goods’ packaging, if the goods are exported from Canada.
With respect to services, a trademark is deemed to be used if the trademark is used or displayed in the performance or advertising of those services.
Third parties are prohibited from causing confusion in the minds of consumers between their goods or services and those of a trademark owner.
In case of registered trademarks, the confusion is implied if someone uses another’s trademark in association with goods or services for which the trademark is registered.
WHERE ARE TRADEMARKS PROTECTED?
Only in those countries where the trademark protection is sought.
Unlike Canada and the U.S., most countries do not recognize unregistered trademarks, so the protection only extends to countries where the trademark has been registered, and a small number of countries where the trademark has not been registered but has been used by the trademark owner to distinguish its goods or services.
LENGTH OF PROTECTION
Trademarks are protected for as long as business continuously uses the trademark in connection with the goods or services with which the trademark is associated.
For registered trademarks, a renewal is required in Canada every 15 years. The renewal term is 10 years in most other countries.
WHO CAN OWN TRADEMARKS?
Trademark owner: the person or the business entity (e.g.,corporation) which uses or controls the use of the trademark.
Trademarks can be assigned to another person or company, but the new owner must use the trademark, and the use must not confuse the public to who is the owner of the trademark.
Trademarks can also be licensed to another person or company. However the licensor is required to exercise control over the quality of goods and services offered by its licensees under the licensed trademark.
DO TRADEMARK OWNERS HAVE ANY RIGHTS IF THEY DO NOT REGISTER THEIR TRADEMARKS?
So long as you are not infringing on another trademark, some rights in a trademark can be acquired by simply using it in commerce.
However, a registered trademark provides additional significant benefits.
WHAT ARE THE BENEFITS OF REGISTERING TRADEMARKS?
Some benefits of registering trademarks: (i) registration protects your trademark all across Canada, whereas unregistered trademarks can only protect you in geographical areas where you can prove that your brand is known to enough customers; (ii) you can apply to register a trademark before you start offering products or services under that brand to the public. Unregistered trademarks are only protected if they are well known to the public; (iii) registered trademark is presumed valid; (iv) certificate of registration proves ownership of the mark; often, showing the certificate to the judge is sufficient to establish rights to the trademark. In the case of unregistered trademarks, you must prove that your name, logo, and tagline are actually trademarks, and that you own them; (v) registration serves as public notice that its owner has a claim to exclusivity of that mark; (vi) after 5 years of being registered, a trademark becomes incontestable, unless it was registered with knowledge of the prior rights of third parties; (vi) a registered trademark allows non-Canadian owners to register corresponding .CA domain names because it fulfills the “Canadian Presence requirements” of the Canadian Internet Registration Authority (CIRA); (vii) the term of registration is 15 years, renewable an unlimited number of times; (viii) registration provides additional statutory remedies against trademark infringement, depreciation of the value of goodwill, and losing the rights to the trademark as a result of the adoption of a confusing official mark by a third party; and (ix) a registered trademark is a valuable asset and can be more readily sold or licensed. It also increases the value of a company.
HOW IS THE RIGHT ESTABLISHED?
Common law trademarks: through use in trade.
Registered trademarks: through registration with trademark offices in the countries where trademark protection is sought.
DEFENCES AGAINST ACCUSATION OF TRADEMARK INFRINGEMENT
Trademark infringement defenses: (i) the trademark is not “used”; (ii) the plaintiff’s trademark is invalid; (iii) the plaintiff’s trademark was not registrable at the date of registration; (iv) the plaintiff’s trademark is not distinctive; (v) the plaintiff abandoned the trademark; (vi) the plaintiff was not the person entitled to secure the registration; (vii) plaintiff’s fraud; (viii) prior concurrent use of the trademark by the defendant in good faith; (ix) good faith use of the defendant’s personal name as a trade name; (x) good faith right to use, other than as a trademark, of the geographical name of the defendant’s place of business; (xi) good faith right to use, other than as a trademark, of any accurate description of the character or quality of the defendant’s goods or services; (xii) acquiescence + delay (plaintiff’s conduct that leads the defendant to believe that the plaintiff will not enforce its legal right against the defendant).
AVAILABLE REMEDIES
Trademark remedies: (i) injunction; (ii) damages; (iii) accounting of profits; (iv) destruction, exportation or other disposition of offending goods.
WHEN CAN TRADEMARKS BE REGISTERED?
In Canada, a trademark application can be filed on the basis of actual use or an intent to use, but no registration will be issued until the use of the trademark has commenced.
Unlike Canada and the U.S., most countries allow registration of trademarks that have not yet been used.
HOW LONG DOES THE REGISTRATION TAKE?
18–24 months in Canada.
9–15 months in the U.S.
ARE THERE MANDATORY MAINTENANCE FEES?
Regular renewals every 15 years. In Canada, the renewal fee is $350.
In most other countries, regular renewals are required every 10 years.
The trademark must continue to be in use by the trademark owner to avoid the risk of it being cancelled at the request of a competitor.
GOVERNMENT FEES RELATING TO REGISTRATION
In Canada, for the filing of a trademark application, the government fee is $250. If the trademark is allowed, the registration fee is another $200.
Most other countries use a system where all goods and services are divided into 45 classes (34 classes of goods and 11 classes of services). Government fees are based on the number of classes in which the application is filed.
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