Your trade-mark is the most important and valuable asset of your business. It differentiates you from your competitors, by branding your products or services with specific character and quality. Therefore, your trade-mark represents not only the goods or services, but also the goodwill and reputation associated with your business and by which you make yourself visible in the marketplace.
A trade-mark allows you to prevent others from using a confusingly similar mark in order to pass-off their goods or services as if it was yours.
Registration of your trade-mark, trade name, brand, and logo is an effective tool enabling you to protect your business without worrying about competitors diluting your goodwill and confuse your customers with products or services of lesser quality. We provide unique pragmatic advice on trade-mark portfolio management, registrability and availability searches, validity and infringement opinions, preparation, filing and prosecution of trade-mark applications in Canada, the U.S. and worldwide.
Our trade-mark practice can also help with licensing, assignment, ownership transfer, as well as enforcing your rights against infringers by conducting opposition proceedings and litigation.
WHAT IS A TRADE-MARK?
A trade-mark is a word, a symbol, a design or any combination used in association with wares (products) or services. A trade-mark is a remarkable and useful tool to distinguish a company’s wares or services from another in the marketplace.
The best trade-marks are instantly recognizable and invoke in the minds of existing or potential customer things like quality, dependability, and the source of the goods or services being bought. Hence, famous and well known trade-marks are the most valuable goodwill, and may come to represent not only wares and services but also the reputation of the provider of such wares and services, such as Coca-Cola, Pepsi, Sony, Harley Davidson, BMW, just to name a few.
As any other area of law, trade-mark registration is a proof of ownership and key to protect it from misuse and imitation. Registration with the Canadian Trade-marks Office protects trade-mark rights in Canada only, where registration confers national protection and prevents anyone who attempts to use or register a similar mark. Thus, if a company provides wares or services in other countries, registration in each of such other countries should be considered.
On the one hand, trade-mark registration is not obligatory but is extremely recommended because it:
- Is a way of verifying the exclusive right of the trade-mark in relation to specific wares or services; and
- Affords a legal protection against infringement or misuse, but can never be a guarantee against all problems relating to trade-mark usage.
On the other hand, using an unregistered trade-mark for a certain period of time establishes its ownership through common law by giving it certain rights. However, the foregoing rights are quite limited compared to the rights of a registered trade-mark. In that regard, if a trade-mark is not registered, the acquired rights are limited to the limited geographic area where it has been used, and its ownership must be proven in a court of law. By registering a trade-mark, an exclusive right is then conferred across Canada for 15 years (renewable for 15 years at a time) and will have the right to initiate infringement proceedings (Provincial or federal courts) which an unregistered trade-marks cannot do.
TYPES OF TRADE-MARKS
There are three types of trade-marks, namely an ordinary mark, a certification mark, and a distinguishing guise. Most business trade-marks are ordinary marks.
There are four types of trade-marks, which are as follows:
Descriptive
A descriptive trade-mark is often the easiest to market because it describes the inherent feature of the goods or services it is marketed with. You may choose a descriptive trade-mark, even though it is a weak mark, because of the marketing benefits in using a trade-mark that describes the product.
For example, the words “sweet” for ice cream, “juicy” for apples, “perfectly clean” for dry-cleaner services, “Honey Roasted Peanuts” for honey roasted peanuts, and “Vision Center” in reference to a business offering optical goods and services could not be registered as a trade-mark. All good apples could be described as “juicy” and all ice cream as “sweet”. These are natural characteristics of the items. If you were allowed to register these words, no other apple sellers or ice cream vendors could use them to promote their goods which would be unfair. But, if you can establish that “Sweet Ice Cream” has become so well-known that people will immediately think of your product (and no one else’s) when they read or hear these words, you may be allowed to register the trade-mark.
A descriptive word can be coupled with a non descriptive word to allow potential registration. The test used to determine if a set of words in a mark are “clearly descriptive” depends on the immediate or first impression of the words as a whole rather than a parsed analysis of the potential meanings of the word.
Suggestive
A trade-mark that does not clearly describe the character or quality of the wares is sometimes referred to as a suggestive trade-mark. In other words, suggestive trade-mark indirectly refer to the goods or services with which it is associated with, but requires the consumer to exercise their imagination in order to determine the nature and identify the characteristic of the goods or services, i.e. perceptive imagination.
Examples of suggestive trade-mark include “Mustang” and “Jaguar” for automobiles, “Blu-ray” for new technology of high-capacity data storage. You may induce that all these trade-marks suggests the speed and storage capacity of their products.
Arbitrary
Arbitrary trade-mark is common English words (dictionary meaning before being adopted as trade-mark) which is used in a meaningless context and a way such that their normal meaning bears no relationship to the goods or services to which they are applied. Obviously, whether a mark is arbitrary or not depends upon its context. Arbitrary trade-mark is also immediately eligible for registration because there is no connection between the trade-mark and the goods or services, but they may present a marketing challenge.
Examples of suggestive trade-mark include “Apple” for computers (“Apple” as applied to computers is arbitrary, but as applied to a fruit grower that mark would be descriptive (See above)), “Ivory” for soap, “Chevrolet” for cars, “Canon” for printers, and “Salty” in connection with, for example, telephones such as in “Salty Telephones”.
Fanciful
Fanciful/inherently distinctive trade-mark is prima facie registrable, and comprises an entirely invented or “fanciful” sign, which are “coined” terms that had no meaning before their use as a trade-mark. They are afforded the greatest amount of trade-mark protection.
Famous examples of fanciful trade-marks include “Xerox”, “Kodak”, “Starbucks”, “Verizon”, “Polaroid”, “Exxon”, and “Oreo.”
TRADE-MARK PROCESS
The first step in the process is to assess whether or not the proposed trade-mark is registrable, or not. A registrability searches and opinions of the Trade-marks Register is a must in order to gauge the degree of registration success.
The process is than followed by the registration of a trade-mark on the Trade-marks Register of the Trade-marks Office of the Canadian Intellectual Property Office of Industry Canada (CIPO). The entire process takes approximately eighteen (18) to twenty four (24) months, unless there are opposition proceedings, in which case the process can be much longer.
The trade-mark process consists of the following steps… [Read More]