Denese Espeut Post
If you enjoy a good trilogy, you are in for a treat. The Legal Libations “Branding” Triology is underway. In my last column, the focus was branding on the Internet. We chatted about domain names, cybersquatting, compliance with the laws of your consumer’s jurisdiction for interactive websites and the creation of privacy policies. In this issue, we will discuss trademark registration for brand name protection. Next time we will talk about developing brand management strategies.
The Benefits of Registering your Brand as a Trademark
- Confirms the legal validity of your mark
- Exclusive right to use your mark throughout Canada even though you may only be using your mark locally
- No person with a confusingly similar mark will be able to obtain registration
- Your trademark can be sold or licenced for a profit
- You can bring court actions for infringement or the depreciation of the goodwill attached to the mark
- Protect your trademark abroad, you can apply for a priority registration in several other countries
Now that you have spent time and energy developing your brand and choosing your brand name, you need to protect that precious name. This is commonly done by registering your brand name as a trademark with the Canadian Intellectual Property Office and, if necessary, bringing court actions for trademark infringement to prevent another person’s use of a trademark or trade name that is confusing with your brand name.
In Canada, we have a national public registry system for every registered trademark. This system protects the rights of owners of registered trademarks by giving public notice of the exclusive rights held by these owners.
If you choose not to register your brand name as a trademark, you may still have some rights in your brand name. You obtain these rights by actually using your brand name with your goods or services. As your name becomes known, you build up goodwill and your mark becomes distinctive, you can bring a court action against another person who uses a confusing unregistered trademark in the area where you have acquired the goodwill in your brand name. However, you will have to prove that your brand name is distinctive (which is not something that you would need to prove with a registered trademark).
As an unregistered trademark owner, you can also oppose an application for the registration of another person’s trademark. For a period of 5 years after registration, you can attack an existing registration based upon your prior use of your brand name and try to have the registered trademark expunged from the registry. After the 5 year period, if you fail to challenge the registered mark, the registration will be incontestable even though it is the same as or confusingly similar to your brand name (unless you can prove that the owner of the registered mark had prior knowledge of your use of your brand name at the time their mark was adopted). If you failed to challenge the registered trademark and protect your unregistered brand name, the Trade-marks Act may offer some protection. The Federal Court of Canada may authorize you to continue to use your brand name concurrently with the registered mark in your defined area if it is not contrary to the public interest. This is not an ideal end result for a business owner who decided against trademark registration. To avoid the risk that you may lose or have to share your unregistered trademark with a registered mark, consider filing an application to register your brand name as a trademark.
As a brand owner, you need to know what is happening in the marketplace to ensure your rights are not being infringed and you are taking adequate steps to protect your rights. You should be continually on the lookout. You can even hire a professional company as a watchservice to ensure the marketplace is properly monitored. Actions for infringement need to be brought quickly.
Speak with a registered trademark agent or a trademark lawyer for additional information about branding or your trademark registration application. ■
Denese Espeut-Post is an Okanagan-based lawyer and owns Avery Law Office. Her primary areas of practice include wine and business law.