OLD NAVY, VIAGRA, MENCHIE’S - when you see these trademarks you know instantly what type of products or services each business will be providing. Trademarks perform a key function in the marketplace and are of enormous value to businesses as they guide consumers to where they want to go.
So how do you create a trademark as prominent as the ones noted above? To begin, it is important to ensure that your trademark actually distinguishes your products and services from the products and services of others and therefore it should be distinctive . That being said, there is much more to selecting a good trademark than simply selecting one that distinguishes your brand from the brands of others.
The best trademarks are those with “inherent distinctiveness”. Marks are inherently distinctive when nothing about them refers the consumer to a multitude of sources, for example where the mark does not describe products, or refer to a geographical location where the products are sold, but instead the mark is a unique or invented name. The best trademarks are therefore the following:
- The alteration of a regular word for example COTTONELLE for use in association with bathroom tissue and SILKIENCE for use in association with ablution products.
- Invented words for example KODAK for use in association with cameras, EXXON for use in association with oil/gas, ZANTAC for use in association with stomach medication; and
- An unusual combination of words for example BABY-DRY for use in association with diapers. These are words that do not go together in a natural way.
Trademarks with a lower degree of inherent distinctiveness will not be afforded a wide ambit of protection. For example:
- Initials and Numerals – these are not entitled to a wide ambit of protection and may not be registrable depending on the surrounding elements of the mark;
- Suggestive trademarks – if a mark suggests, rather than clearly describes, the products and services it is used in association with, then it is registrable, for example BOSTON PIZZA for use in association with restaurant services, merely suggests a type of pizza made in Boston;
- Names, Surnames and Geographic Locations – these are inherently weak marks and may not be registrable depending on the surrounding elements of the mark; and
- Designs/Logos – graphic design elements are always good trademarks provided that there is nothing similar in the marketplace already or on the Trademarks Register; and
- Common words – an example of a trademark composed of common words is the trademark MASTERPIECE for use in association with cakes and chocolate.
When selecting a trademark, it is also extremely important for a trademark owner to assess the legal landscape into which the trademark will be registered. The Trademarks Register should be searched and the state of the marketplace in general must be taken into consideration. The state of the marketplace refers to all trademarks, whether registered or unregistered, so it is extremely important to search.
In addition to the above, there are also legislative requirements that must be complied with in order to be able to register your trademark. For example, brands that include scandelous, obscene or immoral words are not registrable. A full list of brands which are prohibited from being registered as a trademark can be found in the Canadian Trademarks Act.
For all the reasons above and many more, it is extremely important to consult with a Trademark Agent at the very beginning of the process so that they can not only assist you with registering your trademark, but can also assist you with increasing your chances of successful registration by providing advice to you on the availability and registrability of your trademark.
Many people confuse trade names and trademarks and think they acquire trademark rights by virtue of having a trade name. It should be noted that the only way to acquire exclusive rights to your trademark is through registering it with the Canadian Intellectual Property Office.
A trade name is basically a name under which a proprietor or company uses for trading commercially its products or services and/or to promote its brand. Oftentimes, a trade name is used when the incorporating jurisdiction of the company will not approve the use of the trade name as the company’s legal registered name, typically because it does not include a required distinctive element, descriptive element and/or prescribed suffix. Generally such trade name registrations do not confer any proprietary rights to the name, and simply enable the public to ascertain who is using a particular trade name.
The name the business uses to market its products and services is called a trademark. A trademark (or brand name) is the device which identifies the particular goods made, or services provided, and sold by a business. A trade name may itself incorporate a trademark, or may itself be used as a trademark (to denote the origin of goods or services, as opposed to being a name) and may therefore be registrable and enforceable as a trademark. The trade name and the trademark of a business may be one and the same thing, but unless a trademark is actually registered, the protection afforded to trade names only is far less than the protection afforded to a registered trademark. If a business does not apply for a trademark, they may leave their trade name exposed to infringement claims of other trademark owners who may claim prior rights to the same or a similar trade name.
In terms of defending your trade name, the owner of a trade name is entitled to bring an action for what is called “passing off” against a person that uses a trade name that is likely to cause confusion between the businesses of the parties. The owner of a registered trademark has the power to sue potential infringers for trademark infringement.
Trademark registration is not mandatory in Canada but does provide many significant advantages, including the following:
- Registration is direct evidence of ownership;
- In a dispute, the registered owner does not have to prove ownership; the onus is on the challenger. Use of an unregistered trademark can lead to a lengthy, expensive legal dispute over who has the right to use it;
- A registered trademark can be enforced throughout Canada, regardless of whether it is being used or enjoys goodwill in any particular area. An unregistered trademark can be enforced only in those areas where it has actually been used sufficiently extensively to establish goodwill;
As stated above, the owner of a registered trademark may initiate legal action for infringement proceedings and may make a claim for damages. The owner of an unregistered trademark may not initiate trademark infringement proceedings, but must rely on common law "passing off" proceedings, which subject a plaintiff to a much more onerous burden of proof and will only result in the other party having to refrain from using the confusingly similar trademark.
Established and start-up businesses are repeatedly told of the importance of protecting their intellectual property, or “IP” as it is frequently called. Before this can be done however, it is necessary to understand what IP is and how to identify when valuable IP may exist and therefore need protecting.
Intellectual property refers to types of assets that result from creativity or from the operation of the human mind. IP differs from other types of property in that there may not be any physical item that forms the property. Types of IP often protect certain ideas, expressions or representations.
WHAT DOES IP PROTECT?
Because IP is not related to a specific item, the rights granted by IP ownership cannot therefore include the right to control that non existent item. Rather IP rights often grant to their owner the right to prevent others from using, making or copying the idea, expression or representation.
One of the most effective ways to understand what IP is, is by reference to the subcategories that are included within IP. The major divisions of IP are briefly introduced below. It is also important to keep in mind that some subject matter may be protected by more than one type of IP protection however these cases are beyond the scope of this article.
Copyright protects original literary, dramatic, musical, artistic and other similar works. Copyright protection may also extend to software. Copyright arises automatically and is held by the original author of the work in question. The copyright owner has the exclusive right to produce, reproduce, perform or publish the copyrighted work.
A trademark is a word, design, logo, sound or color that is used to distinguish the wares and services of the owner from their competitors. A trademark may also be a combination of more than one of these elements. Trademarks may be registered, however, the mere adoption and use of a mark may provide some protection to the owner as an unregistered mark. Trademarks grant their owner the right to prevent any other party from applying the same or a confusingly similar mark to similar products or to closely related products in some cases.
Industrial design registrations protect the shape, pattern or ornamental features of a manufactured article. An industrial design is limited to the aesthetic features of the article that appeal to and are judged solely by the eye. An industrial design is not permitted to cover aspects of the article which are dictated by the way the article functions. An industrial design application must be filed within one year in Canada of the first publication of the design or sale of the article having the design applied to it.
Patents protect inventions. An invention is any new and useful machine, device, apparatus, system, method, process or composition of matter. A patent grants to the owner the right to prevent anyone else from making, using or selling the invention covered by the patent. Because of the requirement that the invention be "new", it is important that inventor not tell people about the invention prior to filing for patent protection so as to not render the invention no longer "new" and therefore unpatentable
TRADE SECRETS AND CONFIDENTIAL INFORMATION
Trade secrets and confidential information are types of information that are protected by maintaining the secrecy or confidential nature of the information. This is typically done with agreements requiring the person receiving the information to also keep it secret.
PLANT BREEDERS RIGHTS
Plant breeders rights cover new varieties of plants that are originated or discovered by the breeder. These rights provide to the breeder, the exclusive right to sell and produce the propagating material (such as seeds, cuttings, divisions, tissue culture and harvested material) of the new variety.
INTEGRATED CIRCUIT TOPOGRAPHIES
Integrated circuit topographies protect the two or three dimensional layout of an integrated circuit such as a computer chip. The creator of the circuit is granted the exclusive right to reproduce, manufacture or import the topography either in final or intermediate form.
The above information provides an introduction to the types of intellectual property that are available. This article is intended only to assist parties in identifying when they may have subject matter that may be available for intellectual property protection. Specific issues relating to registerability of intellectual property require a more in depth discussion than is possible here. Although these topics will be addressed in future articles, you should contact the writer if there are specific questions that you have relating to any of the types of intellectual property discussed above.