A trade-mark is a distinguishing mark associated in the minds of your customers with your company or brand. Trade-marks can be extremely powerful, evoking at a glance powerful emotions and conveying significant information based on past experiences with the brand. A trade-mark can be one of the most significant assets of a company as it allows the development of brand loyalty. The protection of your trade-mark works to prevent imitation by others, so as to confuse your customers, reducing your sales or brand value.
As a registered Canadian Trade-Mark Agent and a lawyer specializing in Intellectual Property we can assist in all aspects of protecting and enforcing trade-mark rights, from the design of a strong trade-mark, registration, to litigation.
Traditionally trade-marks consist of words (ex. Coca Cola), images (ex. Nike’s swoosh, Apple’s apple with a bite out of it) or a combination of words and images (ex. Coca-Cola in white on a red background). However trade-marks can apply to almost anything capable of causing an association in the mind of a customer with the product, from a colour (ex. Lindt’s Gold for chocolate bunnies), a jingle (ex. Intel Inside) to a shape (McDonald’s golden arches).
The important aspects are that the mark is relatively consistent, and is seen as a source indicator by your customers (as opposed to part of the product itself).
An unregistered trade-mark may have some common law rights in Canada, but these will generally be limited in geographical scope and will be harder to enforce than a registered trade-mark. A registered trade-mark provides protection anywhere in Canada.
Trade-Marks can also be registered in other countries. Generally, you will have no rights in a foreign country unless you have registered your rights in that country. Should you wish to file in other countries, we can assist you in the process.
Registration generally will often take over 2 years from start to finish, and there are advantages to having an earlier registration date. Consequently, it is advised to register valuable marks early. You can even apply to register a mark based on proposed use, before you have begun to use the mark.
We will work with you to register marks in a timely and cost effective manner. Initial preparation and filing of the application is done on a fixed fee basis. Further work on the application is done at our standard hourly rates.
The Canadian trade-mark system allows for interested parties to challenge the pending or registered trade-marks of other parties. This can be particularly useful when a competitor has sought to register a mark that is descriptive of the product which you sell or is overly similar to one of your own trade-marks. If the trade-mark is already registered, the proceeding is an expungement proceeding that needs to be addressed through the Federal Court of Canada.
If the opposition is filed while the mark is still being reviewed by the Canadian Intellectual Property Office, the opposition process can be considerably easier and more economical. In many situations it can be advisable to arrange for us to regularly review the filings of certain known competitors, and for regular searches for marks similar to your own trade-marks.
In the situation that there may be potential infringement, we review a competitor's products and advertisements against your trademarks to determine whether there is a potential claim for trademark infringement. We can also provide advice regarding other aspects of advertising and marketing law.
In our experience the majority of trade-mark disputes can be resolved satisfactory through well negotiated license agreements. Where a suitable agreement is not possible, we can bring a suit on your behalf before the Federal Court of Canada. Trade-Mark litigation can very greatly in terms of complexity and costs. We will work with you to device an effective litigation strategy that best meets your goals, balancing cost, time and risk.