OTHER LEGAL WRITINGS
What is a Trademark?
What is a Patent?
What is Copyright?
What is a Trademark?
A trade-mark is typically a printed logo with or without readable material which operates as the “brand” of a product or service. A typical trade-mark tells the consumer that the product or service comes from the particular firm that uses that trade-mark as its brand. A trade-mark can be both words, designs, or designs with words in them. Anything that distinguishes your product or service could qualify; even shape, colour, ornamentation, and sound.
Trade-marks sometimes cross-over into copyright since some logos are artistic works attracting both copyright and trade-mark rights. Some ornamentation (for example, the stitching on the back pocket of jeans) can be both a trade-mark and an industrial design. Trade-marks and patents are two completely different things and rarely, if ever, does any overlap occur.
Trade-marks give you the right to prevent others from taking advantage of the goodwill built up under a recognized trade-mark. If another firm uses a trade-mark that is the same or similar to yours for a similar product, trade-mark rights may help you stop that and enable you to collect damages. Trade-mark rights may also allow you to defend any claim against you to stop using your trade-mark.
Rights to a trade-mark in law, arise from use and registration under the Trade-marks Act (Canada). Generally, the longer you use a trade-mark, the greater are your rights. Also, the longer the time from the date you obtain registration of a trade-mark, the greater the rights you have.
The Importance of Use
Use is important because in both Canada and the U.S. the law will provide a remedy to a firm which can prove goodwill and reputation associated with a trade-mark. Also, actual use of a trade-mark is the primary basis for a trader becoming entitled to register it as a trade-mark. The remedies under the Trade-marks Act for owners of registered marks are much more effective than the remedies under the law of “passing off” for those who haven’t registered their trade-mark.
Also, if another person registers the trade-mark you are using without your knowledge, you could lose your trade-mark rights. This gives an additional reason to register.
A firm which has both commenced use of a mark and has registered the mark is sitting in a good position to both stop others from using the same or similar marks (for similar goods or services) and to defend any initiatives to halt their own use of their mark.
After 5 years from the date a firm receives registration of a mark, no person can invalidate the registration based on that other person’s own use of the mark prior to the registered owner’s adoption of the mark. Thus, the firm with a 5 year old registration has acquired an even better right than that which arose upon registration.
It is also critical for proving use in priority contests that an organization keep dated documentation in safekeeping for perpetuity of the use of their marks. Documentation including full screen prints of their website dated by the party printing them, copies of brochures, posters, or articles bearing the trade-mark (along with invoices from printers and suppliers) are useful. So too are dated magazine, newspaper or newsletter articles and ads. We advise clients to docket every six months and then to gather any available documentation in this nature, and to review whether or not in that period the mark was used on a new service or product (and if so, for that use to be documented as to the date of first use).
File an Application Early
Since over time there is more, not less, brand usage in any given industry, it is generally more likely that an application filed as early as possible, has a better chance of registration than one filed later. One of the prohibitions against the registration of marks is when they are not capable of distinguishing their owners’ products and services over others’ using similar brands, across Canada (or across the U.S. if that is the jurisdiction in issue). Whether a mark is capable of distinguishing is determined at the date another party (usually a competitor) opposes the application for registration.
Further, recent law makes it much more difficult for a party with early use of a mark to overcome the rights of another party which applied for registration of the same or similar mark in the same area of goods or services. As a practical matter, the effect of the Court decision is to make Canada a hybrid of a first-to-use and a first-to-file system.
Corporate Name/Trade-name Matters
A trade-name means the name that a firm uses to refer to itself. Many firms’ trade-names are also their trade-marks. For example, the fictional company “Clear View Technologies Ltd.” would have that phrase as its trade-name; and, one of its trade-marks would likely be the words: “Clear View Technologies”.
Some practical trade-mark rights can arise from the registration of a corporate name, or from registration of a Declaration of Trade Name under the requirements of the Partnerships Act (Alberta). This is since:
Other firms may have a NUANS-type data base search performed, and be more likely to stay away from names registered there (both registered corporate names and registered trade-names appear on NUANS reports);
The Registrar of Corporations is supposed to refuse to register another name that is “similar to the name of a corporate person” (see the Business Corporations Regulation, especially sections 6 and 7.72); and
The registration is some evidence of use of the words, by the firm, and perhaps of the use of those words as a trade-mark.
No legal rights arise from registering words as a corporate name or as a trade-name. If you want a useful remedy against others or want a strong defence to their claims, a corporate name registration will not be of much use to you.
Searching
Use of a trade-mark should be commenced only if you have no knowledge of conflicting uses of the same or a similar brand name. Also, you should consider having searches done.
The first kind of search to note is a NUANS search. It will identify both registered corporate names and trade-names. It will also identify some registered trade-marks, but it may be inaccurate with respect to trade-marks. It is very dangerous to make assumptions about trade-mark availability based on a NUANS search.
One may also have a trade-mark registry search performed. This will identify most, but not all, of the marks that are registered (or applied-for) that could impair the availability of the applied-for mark. This search is the basic minimum information upon which any application should be made.
You may also have had a “common law” search performed. This is a search for all users of the applied-for mark or any mark confusingly similar to it, that appear in the White and Yellow Pages of the major cities in the jurisdiction of registration. It also includes some trade-directory search results, and includes a search of the common Domain Name databases. It is inherently imperfect, but the “common law” search is highly recommended. It is the best way to ensure there is no person using the mark that you are applying for (or commencing to use) that has superior rights to yours. It significantly reduces the risk of another person opposing your application, seeking expungement of your mark after it is registered, or seeking damages or profits for infringement.
Persons who direct organizations to abuse the trade-mark rights of others (especially if it can be proven that they had some actual knowledge of the other mark) can be held personally liable. Obtaining search information can therefore have negative consequences in some circumstances. As the saying goes, “knowledge can be a dangerous thing”.
Internet Issues
Use of your mark on the Internet is also “use” in some instances. If you use the mark on the Internet and sell products or services into other countries, that may constitute “use” in other countries, particularly in the U.S.. If so, you should consider the ramifications of use of a trade-mark in the U.S. as well as in Canada. You may need to search and register there. The same is true for other countries.
Because of the importance of Domain Names in business, you are advised to review your trade-marks in the context of domain names. You should consider the registration of the domain of any marks that you have or expect to use and of closely similar names for all relevant suffixes including .ca, .com, .net, .org, and perhaps .biz. The registration of domain names is done on a first-come first-served basis, and it could be expensive and difficult to obtain a domain name later, even if you have a priority to it based on trade-mark law.
Using the ™ Symbol
Marking products or promotional materials for either products or services including websites which display the mark, is not difficult. Use the ™ symbol wherever the mark is displayed, and whether or not it is the subject of an application for registration. Use the ® symbol when the mark is registered. If the ® symbol is used on some material just prior to registration, or the ™ symbol is used just after (using up existing brochures for example), this is not a problem. Either notation puts the reader on notice that you are claiming the thing that you place the symbol next to is a trade-mark.
If the mark appears several times on the same page of material, use the symbol on at least the first occurrence. In text, if the mark is used as an adjective (eg. “our mocca™ products are simple and easy to use”) then it is recommended that the trade-mark be placed in a special font or at least italics, again to show it is not a noun (a generic word that is the product or service) and to show you believe you have used a trade-mark. In Canada, mark rights arise in part when the owner believes they are using a thing to distinguish their services, whether or not it actually affects that result.
Also, you may want to go the next step and place a notation on the first page of each document to claim ownership. To continue using the example above, you would state: “mocca™ is a trade-mark of Arriba Furniture Systems Inc.”. Because some marks operate both as trade-marks and copyright-protected “artistic works”, other wording may be optimal.
If you allow any party other than you (the sole owner) to use the mark, including sister companies, subsidiaries, and of course third parties, you very likely need a particular written license drafted by legal counsel. You should also have that other party display on the product or promotional material used to promote the services (where the mark is displayed) state, to continue the example, “mocca is a trade-mark of Arriba Furniture Systems Inc., used under license”. Seek Specific Advice As the above is simply general advice, the reader is advised to obtain specific advice from Brownlee LLP or other experienced trade-mark counsel before adopting the recommendations above.