What’s in a name?

Trademarks are the name, design, brand or logo that represent the products and services a company offers. They can be the word that customers associate with a company. If the mark is well known, it can be the major reason why consumers purchase the product or service.

 

Why you should register

When you register a trademark, you receive an exclusive right to the identified mark for use with the goods and services for which it is registered. While you may still use your mark without registering it under the Canadian Intellectual Property Office (“CIPO”), your mark will not be protected from unauthorized use. In other words, everyone is free to steal the creativity and brand recognition that has gone into the name of your mark. If your mark is protected by CIPO’s registration system, you can claim an intellectual property infringement against any individual or company that tries to use a mark that is the same or a similar to your protected trademark, for the same or similar goods or services.

 

When you should register

The sooner, the better! The best time to register is before you have built up goodwill with a name. That way, if the name you have chosen is already protected, you can choose another name. If you have already begun to gather some goodwill and a reasonable customer base in association with a mark, it is not too late, but you should register as soon as possible. This will help to protect the business you have built before someone else registers that name. It will also give you a chance to change if you discover that you are unknowingly infringing on an already protected mark. Sooner is also better than later because the registration process is quite lengthy and can take up to two years to complete.

 

The registration process

Even though trade-mark registrations are handled by trade-mark agents and/or trade-mark lawyers, it is important for you, the trade-mark holder, to understand the process of registering your trade-mark.

 

The trade-mark registration process is a team effort between the company applying for the registered mark and their agent representative (note that the company’s trade-mark lawyer is generally known as an agent representative by CIPO). The company understands the products and services it offers and the story behind its mark better than anyone else, while the agent representative understands the registration process and what the examiner of the file is looking for in an acceptable trade-mark.

 

The following are basic steps:

 

Step 1: Identify the Mark. The company will identify the mark the company would like registered. The mark will be the focus of the application.

 

Step 2: Identify the Competitors. The agent representative should complete an analysis of the competitors to determine whether they have any similar-sounding or similar-looking marks that are used in conjunction with similar goods and services.

 

Step 3: Conduct a Search on the Intellectual Property Office’s Website. CIPO’s trade-mark search database will generally have lists of marks that are registered, searched (currently in the registration process), expunged, or abandoned. It is important to conduct a thorough search in order to minimize objections by the examiner.

 

Step 4: Determine the Goods and Services. After an analysis of competitors and similar marks found in the database, the list of goods and services to be registered in association with the mark should be determined.

 

 

Step 5: File the Application. This is where the waiting game begins!

 

Objections

After the application has been filed, the examiner should respond to the agent representative within a 6 month period. The response may contain objections on various grounds, including: re-specifying goods and services; color claim description of a logo; or confusion with a previously applied-for or registered mark.

 

The most complex objection is the confusion objection, when the examiner finds that the applied-for mark is confusing with respect to another mark that is already registered in CIPO’s trade-mark database. This will require the agent representative to develop compelling arguments as to why the marks to be registered are not actually confusing, either with respect to the name itself, or with respect to the goods or services it is used with.

 

The following case is a surprising example of a successful defense to a confusion objection. In Mattel U.S.A., Inc. v 3894207 Canada Inc., the applied-for mark had the word BARBIE in its business name. It is arguable that most people in the world would associate the word ‘Barbie’ with the famous doll. Who doesn’t recognize a Barbie when they see one? Nevertheless, the Federal Court of Appeal held that use of the word in the name of a restaurant services business was not confusing with the appellant’s ever-so popular mark, BARBIE, used in connection with the doll. Compelling arguments by the defendant’s counsel succeeded against the retail toy giant, Mattel.

 

Conclusion:

The trade-mark registration process is lengthy and complex, but essential for the protection of  your brand recognition. Protect your goodwill, and register your trademark!

 

Take-aways:

A mark should be registered in the early stages of a company

  • A registered trade-mark will generally allow the trade-mark holder to bring intellectual property infringement claims against the ‘infringer’.
  • the registration process is a collaborative effort between the company applying for the registered trade-mark and the agent representative
  • objections by the examiner require a compelling response by the agent representative

 

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