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Essentials of Trademark Law

Essentials of Canadian trademark law

What is a trademark? A trademark is one or more words, a design (such as a logo) or a combination of the two that is used to distinguish in the mind of the public the goods or services that you offer or perform from those of another.

A trademark does not have to stop at mere words. Today it is common for a trademark to involve an entire phrase, such as the American Express Company's trademark: MEMBERSHIP HAS ITS PRIVILEGES.

Trademarks can be very valuable assets since they can come to signify in the mind of the public a certain standard of quality and excellence that will be relied upon by them in the purchase decision. For example, a grocery shopper may automatically reach for a product bearing the DEL MONTE label because that trademark has earned the reputation of representing products of 1st class quality.
Using the ™ and ® symbols: You can use the ™ symbol at any time, even if you have not applied for its registration. It's wise to do so, since it gives notice to the reader that you are claiming trademark rights to it.

You can only use the ® symbol once your trademark is actually registered with the Trademarks Office in Ottawa/Hull.

These are the French equivalents for the symbol, and the ® symbol:

  • the ™ symbol in French is mc

    (it stands for "marque de commerce")

  • the ® symbol in French is md

    (it stands for "marque déposée")

What is a confusing trademark? If your mark is similar to a preexisting one, and the products or services are also similar, it is possible that your trademark may be confusing and you may be infringing upon their trademark.To try to prevent an allegation of trademark infringement, before using your trademark, have a lawyer conduct a trademark availability search to determine whether someone already has the rights to your trademark or a version of your mark.
What is a strong trademark?What is a weak trademark? A descriptive trademark is a trademark that describes its goods or services. For example, golden oldies is a popular radio format, yet those words describe the type of music the listener can expect to hear on the radio station. Descriptive trademarks are considered to be weak trademarks and are hard to legally protect.

Trademarks that contain common words, or ordinary dictionary words, can also be weak trademarks and so do not have a wide degree of legal protection.

Another problem with a weak trademark is that small changes in marks could be enough to differentiate one trademark from another.
Tip #1: Trying to avoid confusion The best way to avoid confusion is to have your lawyer conduct a trademark search before you start to use the mark. Then, a potential problem can be identified right away before investing more money in it. As well, the search will tell you whether modifications can transform an otherwise unavailable mark into one that is usable.
Tip #2: Strengthening your mark Words that are invented or are coined, such as "Kodak," are considered to be strong trademarks and are generally granted a much broader range of protection. By avoiding words in your mark that are descriptive of its goods and services, and by having an invented or coined component to your trademark, you will be better able to protect it against someone having a confusingly similar version of it.

Essentials of United States & international trademark law

Does someone already have your trademark in the foreign country? Before using your trademark in the foreign country, have a trademark availability search done in relation to that country.

The foreign country trademark availability search can be done from Canada in about the same time it takes to do a Canadian search.

Why do this? There are 3 reasons:

  1. The legal fees to defend a trademark infringement case in a foreign country can be very high. It's therefore cheaper to determine availability in advance.

  2. Even if you are able to settle a potential foreign trademark infringement case without going to court, the costs involved in withdrawing your product labels, catalogues, etc. can be high. It's cheaper to determine availability in advance.

  3. If you are launching a new product in both Canada and the foreign country, you will want to use the same mark in both countries. If the mark is available in one country, but not the other, you may want to modify the mark to be able to use the same mark. So, it is important to check availability in both countries at the outset, even if the foreign product launch may not take place for a number of months.

Registering your trademark in the foreign country As in Canada, you can protect your legal right to your trademark in the foreign country by filing a trademark application there. The foreign trademark application can usually be filed in either one of three ways (this is so, for example, in the United States, Europe, Japan, Australia):

  1. based upon actual use: this means that the trademark has actually been used by you, or your representatives, in the foreign country

  2. based upon proposed use: this means that you haven't used your trademark yet in the foreign country, but want to reserve rights to the mark there

  3. based on your Canadian filing date: if you file an application in Canada, but not in the foreign country, and later discover that you will be using the mark in the foreign country, under an international treaty many foreign countries (including the United States) will allow you to file your foreign country trademark application within 6 months of filing the Canadian trademark application, and the foreign country's Trademarks Office will grant you the same (earlier) filing date as you received in Canada.

Handy chart showing stages of trademark registration process

Birth in this stage, you create your mark points to remember as you create it:

  • avoid similarity to another mark

  • avoid words that are descriptive of the mark's goods or services

  • an invented word (such as KODAK) has the widest range of protection

  • common words are not easy to protect

 
availability search in this stage, a search is made of the Trademarks Register in Ottawa to determine whether someone else has already registered or applied for the same mark or a confusing version of it for similar goods and services 3-4 days
trademark application filed a trade mark application can be filed in one of these 3 ways: (i) actual use of the mark, (ii) future use, or (iii) both, that is, actual use with some products and planned use with others next day (if necessary)
Trademark Office review in this stage, an Examiner in the Trademarks Office reviews the mark to make sure it complies with all the requirements of the Trademarks Act 4-5 months after filing
advertisement once approved by the Trademarks Examiner, the public is given notice of the mark by its being advertised in the Trademark Office's magazine 2 months after Trademark Office approval
opposition period once advertised, the public can oppose the mark's registration if they feel it is confusing with their own mark 2 months from date of advertisement
registration Certificate of Registration is issued 2 months