Registering a trademark is a win for any brand owner: not only does it provide a broad monopoly and the exclusive right to use the mark across Canada, but also it confers powerful remedies against unauthorized use as well as a defence or 'shield' against infringement claims by third parties.
However, obtaining a registration is not the end of the story. In fact, it is just the beginning. Any registration may be attacked if the mark that is being used varies or deviates from the mark that was registered, or if the mark is not in fact being used in the Canadian marketplace.
Competitors may challenge trademarks that are registered at anytime after the 3rd anniversary from the date of registration. Therefore it is very important for brand owners to begin using their mark in Canada (preferably in the exact form as it was registered) within the first 3 years following the date of registration. Otherwise, the registered trademark may be challenged either for non-use, or on the basis that the mark 'as used' deviates from the mark 'as registered'.
"Use" has a very specific meaning under the Trademarks Act, and this definition varies if the trademark is used in relation to goods or services. "Use" in relation to goods is deemed to occur when the mark is displayed on the goods themselves or on their packaging. The Act makes no mention of the display of a mark in advertising or other promotional material. Therefore, the display of a mark on a website or in social media posts would not qualify as "use" in respect of goods. For example, if you have registered ACME for use with t-shirts, you must ensure that the word ACME appears somewhere on the t-shirts themselves, the tags or any labels affixed to them. Posting a photo on Instagram stating "Check out our new ACME t-shirt" would not qualify as "use" of the ACME mark for t-shirts in Canada. Moreover, you would need to establish the sale of t-shirts in Canada since the mark must be displayed at the time that the sale/exchange is made.
By contrast, "use" in relation to services is deemed to occur when the mark is displayed in the performance of or advertising of the services. If you guessed that displaying the ACME mark on a website advertising personal shopping services would be sufficient to constitute use in relation to services, you guessed correctly! Provided, of course, that these services were available in Canada to Canadian consumers.
If you are a brand owner with 'post-registration' questions, we're here to help. Please contact us.
The goal of IPIC’s Indigenous IP Committee is to raise awareness in Canada of the relationship between IP law and the protection of Indigenous knowledge and cultural expressions. Click here to read IPIC's interview with Chair of the IPIC Indigenous IP Committee, Paula Clancy.
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:
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:
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:
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.