By Trish Sawhney

At some point or other, you have most likely seen the trademark symbol (™), or the registered trademark symbol (®) being used in association with various goods and services. These two symbols can be confusing. What exactly do they represent and why should you use them?

The ™ symbol is used when a mark is used as a brand identifier and meets all the requirements of a trademark but the mark is not actually registered.  By contrast, the ® symbol signifies that the mark has been registered by the Canadian Intellectual Property Office. Whenever you use your trademark in marketing materials or packaging, you should use the appropriate symbol.  Keep in mind that the ™ symbol may be used even if you haven't registered your trademark, therefore you should begin to use it as soon as possible.

In terms of the positioning of these symbols, they normally appear on the upper right side of the trademark, as a superscript, for example: Clancy PC™  or Clancy PC®.  However, there are no set rules as to where the symbol must appear.

Using either of these symbols to indicate trademark ownership can be quite advantageous. Not only do these symbols provide public notice of trademark use, but they also help your brand develop goodwill. By using the symbols, you can communicate to the public that you are invested in protecting your intellectual property.  Your competitors will be precluded from arguing that they were not aware that the word or design was being used as a trademark, or that they did not know you had asserted trademark ownership. We recommend you review your website, marketing materials and packaging to determine whether you are using trademark markings where necessary.

Have any other questions about trademarks or which symbols to use association with your trademarks? Please contact us! 

By Sukey Omran

Bill C-86 has introduced bad faith as a new ground of opposition.  In other words, an opponent may now oppose a trademark application on the basis that it was filed in bad faith.
 
Prior to the amendments to the Trademarks Act, Section 30 (i) required an applicant to declare that it was satisfied of its entitlement to use the trademark in Canada. This provision was sometimes used to attack applications filed in bad faith since it was argued that an applicant could not be satisfied that it was entitled to use the mark in Canada if it was filed in bad faith. 
 
The following are examples of where bad faith may be found:

1. Where an application has been filed by a licensee/distributor without the authorizatio of the trademark owner; 
2. Where one joint venture party files an application that was intended to be owned by the joint venture; 
3. Where an applicant files multiple applications for well-known marks for unrelated goods and services (i.e. trademark squatting); and
4. Where there has been a violation of another statute or regulatory regime, such as a copyright infringement.

We know you have nothing but the best intentions in mind, but where in doubt, feel free to contact us so we can help you avoid any allegation of bad faith!

By Trish Sawhney

On January 1, 2021, the Canadian Intellectual Property Office will be increasing its fees for several services, including:

• Filing fee for a Trademark Application
• Filing a Statement of Opposition
• Filing an Application to extend the statement of goods or services
• Filing a S.45 Cancellation action
• Renewal of a Registered Trademark

 
For a list of updated fees please click here.

​We would be pleased to review your trademark portfolio and provide you with recommendations of cost-effective strategies to help minimize expenses before the increases come into effect.

​For more information (on how to keep those extra dollars in your pocket!), please do not hesitate to contact us. 

By Trish Sawhney

When submitting a trademark application, clients often ask whether they should file an application for a standard character mark, a design mark, or both.   

A standard character mark, also known as a word mark, refers to a word, phrase, acronym, numbers or letters, regardless of the font, size, style, colour, etc. It is often deemed to be the broadest form of protection since it covers the words themselves. By contrast, design marks may consist of pure design elements and/or word elements. However, the word elements are protected in the context of the design, therefore if the design changes, protection for the words incorporated in the design may be lost. 

When deciding whether to register the word(s), the design, or both, some important factors to consider are:

• What is your budget? Ideally, separate word mark and design mark applications is best as it offers a wider scope of protection; however, filing multiple applications is more costly. If you cannot justify the expense, combining the word and design elements in a single registration or simply filing one or the other can be cost-effective. Alternatively, focusing on the word element(s) alone will offer you the broadest scope of protection.

 

• How strong is your word mark by itself? Some word marks are deemed unregistrable as they can be confusing with another registered mark, descriptive of the goods or services with which they are associated, or considered lacking in  inherent distinctiveness. By adding distinctive design elements this may help to overcome these types of objections. 

 

• Do you see your design mark changing in the foreseeable future? Design marks only protect the exact design filed, so if you anticipate changing your logo or design over time, keep in mind that you will need to file a fresh application.

 

• How memorable is your design mark? Design marks can be very effective as they are memorable for the average consumer. If your design is very unique and you want to ensure others don't copy it, trademark protection can be a very good tool as unlike copyright registration which eventually expires, trademarks may be renewed in perpetuity.  

Have more questions about choosing the right type of mark for you? Don't be shy - contact us for a free consultation!

Paula Clancy will be participating in a Twitter Q&A for Canadian Innovation Week.  Join us Thursday, November 19th at 1:00 p.m. @CanadianIP @PaulaClancy @BngatchaIPlaw @IPIC_Canada and @Cdn_Innovation to chat about Intellectual Property and Innovation in Canada.