Introduction to trademark

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Introduction

A trade-mark is a word, symbol or design, or a combination of these, used to distinguish the goods or services of one person or organization from those of others in the marketplace. Trade-marks have come to represent not only the wares and services themselves but also the reputation of the company. They are considered as an important intellectual property (IP) asset. Trade-marks can also comprise the emblem (logo) of the company, the shape of an object, as well as a signature.

To introduce a brief history of trademark, the use of marks to identify and distinguish property dates way back and for good reason. Until the invention of the printing press, and subsequent invention of moveable type, books were rare and very expensive.

Even with the advent of more plentiful books and newspapers, literacy was slow to catch on. Servants and slaves who could read and write, as well as do numbers, were prized and highly regarded. The great majority of people could not read or write nor did they have a need for either. Hence symbols became the logical method of letting people know who did what and what belonged to whom.

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Use of marks to indicate ownership of goods was particularly important for owners whose goods moved in transit, as those marks often allowed owners to claim goods that were lost. Producers often relied on identifying marks. Trademarks are often associated with a company's reputation or goodwill, and many companies have a brand name, which is associated with high quality etc. Only they have the right to produce and distribute that trademark, so not just anyone can go and put a Coke label on a can of cola and call it Coca Cola.

Throughout the history of trademark law, the law has worked to protect the consumer from inferior counterfeits or substitutes.It also protects the producer, as they have a reputation to protect, and if someone is producing a low quality product and putting their brand name on it, that bad quality is going to get associated with that company. Such will hurt their businesses reputation.

Different kinds of Trademark and Trademark symbols

There are three basic types. Ordinary marks are words and/or symbols that distinguish the goods or services of a specific firm. Certification marks identify goods or services that meet a standard set by a governing organization. Distinguishing guise identifies the shaping of wares or their containers, or a mode of wrapping or packaging wares.

  • TM for an unregistered trademark;
  • SM for an unregistered service mark;
  • ® for a registered trademark or service mark.

Difference between trade-marks and other forms of intellectual property

Trade-marks are only one form of intellectual property that can be protected through federal legislation. The other forms are: patents, for new technologies; copyrights, for literary, artistic, dramatic or musical works, performance, sound recording or communication signal; industrial designs, for the shape, pattern, or ornamentation applied to an industrially produced object; and integrated circuit topographies, for the three-dimensional configuration of the electronic circuits embodied in integrated circuit products or layout designs.

Registration processes of trademark in Canada

The Canadian Intellectual Property Office (CIPO) is responsible for the administration and registration of trademarks.

Trade-mark registration usually involves:

  1. A preliminary search of existing trade-marks;
  2. An application;
  3. An examination of your application by the Trade-marks Office;
  4. Publishing of the application in the Trade-marks Journal;
  5. Time for opposition (challenges) to the application; and
  6. Allowance and registration (if there is no opposition).
  1. Preliminary Search
  2. The first step is to make an availability search by consulting the Canadian trade-mark database accessible via the CIPO website in order to verify if the mark you wish to register is not confusing with any other mark. The best strategy is to proceed with this search prior to the launch of your products and/or services on the market to avoid possible legal proceedings.

  3. Filing of an Application
  4. In order to complete the registration process, the trade-mark must be used in Canada beforehand. However, an application can be filed on the basis of intended use, which allows the enterprise to begin protecting its mark before it is actually used in the marketplace. Once the application is filed, the registration process is formally under way.

  5. Reception of the Official Filing Confirmation
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    The CIPO assigns an application number and a filing date to your application. The application is then ready to be examined.

  7. Examination
  8. An examiner from the CIPO verifies the application in order to determine if the mark can be registered and if all required formalities are met. If it is not the case, the owner will be afforded the opportunity to modify his or her application or argue in order to overcome any objections raised by the examiner. If everything is correct, the mark will be approved and advertised in the Trade-marks Journal.

  9. Publication
  10. The application is advertised in the Trade-Marks Journal. If no opposition is filed against the mark during the two months after its publication, it will be allowed. On the contrary, if the application has been opposed, it will be deferred until the resolution of the opposition.

  11. Opposition (when applicable)
  12. There will receive a copy of the Statement of Opposition. It will take about a month after its reception to file a counter statement or request an extension of time in order to do so. Then, both parties will have the right to file their evidence to justify their positions. If the opposition is withdrawn, the application will then be allowed. Written arguments can be submitted. A hearing is also possible and can be held by phone.

  13. Allowance and Registration
  14. The owner should now pay the registration fees. If the owner have filed an application based on intended use, he or she should also file a Declaration of use in order to obtain the registration. It is possible to request extensions of time to meet these requirements. If no Declaration of use is timely filed, the application will lapse.There will receive the official Registration Certificate by mail.

All this process can be very long and its duration can vary depending on the obstacles that you may have to overcome. You can accelerate things by using the services of one of our trade-mark agents.

Duration of Trademark in Canada

In Canada, a Trade-mark is registered for a period of 15 years from the date of registration. It may be renewed every 15 years without limitation. If at the end of the 15 years, it can be continued the registration for a further 15 years, a renewal fee is payable.

Protection offered by trademark in Canada

Trademark registration is proof of ownership and therefore a key way of protecting a trademark from misuse and imitation. Registration is not obligatory but is recommended because it is a way of verifying the exclusive right that is established through using the trademark in relation to specific wares or services. It is important to realize that, while registration affords the greatest possible legal protection against infringement or misuse of a trademark, it is, and can never be, a failsafe guarantee against all problems relating to trademark usage.

The owner of a registered mark is granted the right to the exclusive use of his mark Canada-wide even if the mark is not used throughout all of Canada. The owner of an unregistered mark has protection, under civil law, within a confined geographic area where he enjoys an established reputation and goodwill.

Furthermore, registering a trademark with the Canadian Trademarks Office protects rights in that trademark in Canada only. Where an entity is providing wares or services in association with a given trademark in other countries, registration in each of such other countries should be considered.

Registrable and non-registrable Trademarks in Canada

  • Clearly descriptive trademarks (e.g., "sweet and cold" for ice-cream) and deceptively misdescriptive trademarks (e.g., "air express" for a courier service that uses ground transportation) are not eligible for trademark protection.
  • A trademark that is confusingly similar to a registered mark is not registrable if used in association with similar wares or services.
  • A purely functional trademark is also not registrable (e.g., the stud design of the Lego building block toy was not afforded trademark protection).
  • Certain marks may be afforded protection as official marks (e.g., Canadian flag, emblem of the Red Cross) regardless of the underlying wares and services. Official mark protection is available only to public authorities and similar applicants. An applicant is qualified as a "public authority" if it is subject to a significant degree of governmental control and dedicates any profit it earns to the public benefit.
  • Other forms of trademarks include colours, sounds, motions, scents and three-dimensional shapes. Colour can be protectable when applied to the surface of a device, such as a pharmaceutical tablet or a telephone. Colour alone, however, is not appropriate subject matter for trademark protection. Sound marks, motion marks and scents are not registrable in Canada.

Some cases of trademark registration in Canada

The Friendly Stranger Corporation v. Avalon Suns plash Ltd

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This event was an appeal of a decision of the Trade-marks Opposition Board refusing several trademark applications filed by the Applicant. The Applicant sells products related to hemp and marijuana through its Toronto store, The Friendly Stranger Cannabis Culture Shop, and sought to register CANNABIS CULTURE SHOP, CANNABIS CULTURE SHOP & Design and FRIENDLY STRANGER CANNABIS CULTURE SHOP & Design. The Opponent, Avalon Suns plash Ltd., publishes a bi-monthly magazine called "Cannabis Culture", operates a store in Vancouver and maintains a website at cannabisculture.com.

The Opposition Board had concluded that "the distinctiveness of the Opponent's mark was sufficient to negate the distinctiveness of the applied for mark". Notwithstanding additional evidence filed on appeal, the Federal Court agreed, noting the similarity of the wares and services, and that the only difference between the Applicant's mark, CANNABIS CULTURE SHOP, and the Opponent's mark, CANNABIS CULTURE was the use of the word "shop", which was not in itself inherently distinctive.

The Opposition Board had also refused FRIENDLY STRANGER CANNABIS CULTURE SHOP on a balance of probabilities, since it resembled the Opponent's mark and both parties targeted the same market. However, the Federal Court was satisfied that this mark should be allowed since additional evidence shifted the emphasis to the words "Friendly Stranger" from "Cannabis Culture Shop".

The Court also considered the related Trade-marks Acts, which provides that a trademark causes confusion with another trademark if the use of both trademarks in the same area would lead to the inference that the wares or services associated with the trademarks are marketed by the same person. On this point the Court referenced the finding in United Artist Corp. v. Pink Panther Beauty Corp. [1998] F.C.J. No. 441 that although the wares of the parties were similar, the Court was satisfied there was also no confusion as to source since the marketplaces were very different. Friendly Stranger Cannabis Culture shop had a strong presence in Toronto, while the Opponent's marketplace was Vancouver.

Moreover, the internet sales were only a small fraction of what was sold in the stores and the domain names of the parties were very different. Presumably, if the Opponent had had a stronger internet presence the Court might have found some confusion since it would have then been difficult to differentiate the "marketplaces" in Vancouver and Toronto. However, this was not the case.

Sanders v. Smart & Biggar Intellectual Property and Technology Law (Evidentiary Omissions Lead to Trademark Appeal)

That is a good example of the difference thatwell prepared evidence can make. The Trademarks Opposition Board expunged theapplicant's trade-mark, "UGGLY BOOTS"pursuant to the Trade-marks Acts because the applicant had not demonstrated use of the trademark in Canada. The Board found that the applicant's evidence was "rampant with ambiguities" and omissions.

The applicant appealed to the Federal Court pursuant to the Act. The applicant was allowed to present new evidence and the appeal was treated as a new hearing. The applicant's new evidence consisted of the affidavits of five clients, which all showed the transfer of wares with the trademark. The affidavits also attached invoices proving the transfers took place. The Court found that this new evidence went beyond mere allegations of use, noting that theapplicant was only required to produce "evidence of a single sale, whether wholesale or retail,in the normal course of trade" so long asthe sale was not deliberately manufactured or contrived to protect the registration of the trademark. In applying the principle of use "in the normal course of trade", the Court also noted that good faith is presumed when there is no evidence challenging the affiant's credibility. Thus, the Court found in the applicant's favour, something the Board might have done if better evidence had been presented at first instance.

References

  • http://www.brouillette.ca/brouillette/apropos/contact.do
  • http://www.iplawcanada.com/services/trademark_faq.html
  • http://www.trademarkblog.ca/
  • http://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/home