Chances are you can still recall a jingle from your childhood – a memorable snippet of song advertising your favourite cartoon, fast-food restaurant or a coveted toy.  Sound can be a very effective way for marketers to distinguish their products from those of competitors.  Think of the way the Oscar Mayer jingle gets lodged in your brain (“My baloney has a first name; it’s O-S-C-A-R….”  If you really want to hear it again, just click here).

Sound can function — and can be registered — as a trade-mark.  Registering sound as a trade-mark is a relatively recent phenomenon, and as a result only a small fraction of registered trade-marks are “sound marks”.  One famous example is the effort by Harley-Davidson to register “the exhaust sound of applicant’s motorcycles, produced by V-twin, common crankpin motorcycle engines when the goods are in use” in the United States.  Predictably, this application was opposed by 9 competing motorcycle manufacturers. The opponents asserted that the exhaust sound was purely functional and not eligible to be registered as a trade-mark.

Internationally, trade-mark practice varies widely and local counsel is required.  In the United States, there are only about 100 registered sound marks.  In Canada, this practice is still in its infancy.  In Australia only 25 have been registered.  Under the European Community Trade-mark regime, there are 31 registered sound marks.  Interestingly, the trade-mark laws of some countries, such as Egypt, China and Saudi Arabia, expressly prohibit the registration of sound marks. 

For a Canadian example, Tellme Networks, Inc. (a US company) applied to register a sound mark consisting of “a musical jingle in the key of C, comprised of two notes in sequence of F, C and any relative equivalent thereof.”  The description of the mark makes it very difficult to determine what the mark is without musical training, but this type of description satisfies the application requirements. 

With increasing competition and the use of more imaginative ways for advertisers to reach their targets, sound marks and other non-traditional marks will likely increase in importance, particularly given the power of sound or music to transcend cultural or language barriers.

Calgary – 14:05 MST

If you go through Google’s AdWords program and buy a competitor’s trademark as a keyword, are you infringing on that competitor’s trademarks rights?

US courts are still struggling to sort out the law on this issue and while there have been a few Canadian skirmishes over the use of meta-tags, Canadian courts have yet to tackle the adwords issue directly.  The US decision in J.G. Wentworth SSC Ltd v. Settlement Funding LLC d.b.a. Peachtree Settlement Funding No. 06-0597 (E.D. Pa. Jan. 4, 2007) scores a point for advertisers.  In this case the defendant Peachtree bought its competitor’s name “J.G. Wentworth” as an adword and included the same name in its metatags.   J.G. Wentworth sued for trademark infringement.  

Although past cases have gone both ways on this issue, this decision shows that the courts will examine what is ultimately displayed to the consumer.  Here, the use of the competitor’s trademarks was entirely behind the scenes.  J.G. Wentworth’s trademarks were never displayed in search results or ad copy.  Therefore, the court reasoned, consumers never have a chance to confuse the defendant’s services or links for those of the plaintiff.   The case was dismissed. 

Calgary – 14:30 MST

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Well, it didn’t take long.  Yesterday, Apple unveiled its iPhone.  ipblog.ca questioned how Apple intended to brand its new device considering the trademark was already registered by Cisco and applied for by several other companies. 

Today Cisco announced that it has sued Apple in the United States District Court for the Northern District of California “seeking to prevent Apple from infringing upon and deliberately copying and using Cisco’s registered iPhone trademark.”  

Calgary - 16:39 MST

Apple unveiled yet another iconic product at MacWorld today: the iPhone, a sleek, multifunction device with a full touch-screen which solves the design problem of packing a number pad and a QWERTY keyboard onto a device meant to slide into your shirtpocket.

The iPhone seems destined to follow in the iPod’s footsteps as a consumer favourite. However, trade-mark lawyers must raise the question: what do they plan to call the thing? Apple’s application for the trademark “iPhone” is being opposed in Canada by Comwave Telecom Inc. which claims rights dating from 2004 in association with local and long distance telephone services, and VOIP telephone services. In the US, the “iPhone” mark is claimed by no less than four companies: Teledex LLC, XTREME Mobile LLC, Ocean Telecom Services LLC, and CISCO Technology, Inc. the last of which has a trademark registration. Apple hasn’t even applied for the trademark in the US. Apple must have a plan of some kind and let’s hope it will be another example of creative thinking. Otherwise this branding exercise will hit a brick wall.

Calgary - 22:15 MST

CIRA will release the next batch of gently used .CA domain names on January 10, 2007.  There are about 2100 names on the list, including a number of trade-marks (for example, MGMStudio.ca, Nokiaringtones.ca and xboxnews.ca), a number of typosquatting domain names (wwfutureshop.ca, wwmsn.ca, wwshaw.ca, wwticketmaster.ca and wwwalmart.ca) and about 130 domain names which double as downtown Vancouver street addresses. 

Calgary – 10:52 MST

Let’s start the new year on a positive note: how to resolve differences peacefully when two identical or similar brands start overlapping in the marketplace.  You have taken steps to ensure your brand is unique in your own country.  But what happens when that brand becomes successful elsewhere in the world, and suddenly you’ve got a potential dispute brewing with a foreign trade-mark owner? 

Do you litigate or negotiate? 

In the case of Apple vs. Apple, the answer is a bit of both.  Apple Computers with its stylized apple symbol, and Apple Records , with its granny-smith apple logo, have been in and out of court rooms and the lawyers’ boardrooms for more than twenty years, trying to navigate through the trade-mark minefield.  A 1981 arrangement ended up in court in 1989, resulting in a coexistence agreement in 1991 .  This lasted until 2003, when the success of Apple’s iTunes service ignited another lawsuit.  In 2006, Apple Computer was cleared of the allegations of breaching the coexistence agreement in a decision of the High Court of England.

Another recent case illustrates an alternative approach.  Tsubi, the successful Australian jeans designer bumped up against Tsubo, an American shoe company.  Rather than fight a trade-mark infringement battle, Tsubi and Tsubo reached a settlement in which Tsubi will retain its trade-mark in Australia, but will be re-branded as Ksubi in the rest of the world.  The Australian company now faces the challenging task of educating its customers and migrating them over to the new brand.  A little creativity and flexibility means that they will be spending their money on marketing instead of litigation.   

Calgary – 11:06 MST

Internet Trends

User-generated content (not only from blogs and YouTube, but also from Reuters and the BBC) is on the rise. 

As users continue to mash-up their own content with content borrowed from elsewhere, the intellectual property fur will continue to fly.  Expect copyright battles, trade-mark skirmishes and technological protection measures to make headlines as ordinary citizens test the boundaries of  “user-rights” vs. copyright.

Trade-marks 

There are not too many areas of the economy where branding and corporate identity are not a critical issue.  The Supreme Court of Canada weighed in on two significant trade-mark cases in 2006: the court reviewed “famous marks” in the Barbie case (Mattel Inc. v. 3894207 Canada Inc), and in the case of Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltee.  Trade-marks will continue to overlap with internet law and inter-jurisdictional issues, as we have seen in cross-border disputes such as the Pro-Swing vs. Elta case.

Domain Names 

Trade-mark owners can’t rest as domain name battles become a full-time occupation.  Some developments are helpful: WIPO issued its Overview of Panel Views which serves as a useful guide for those engaged in UDRP disputes.  Other developments are less encouraging: consider how the click-through ad-revenue system favours cybersquatters who can turn a quick profit from domain names which capitalize on the reputation of brand owners.  Microsoft’s battle with these cybersquatters will be interesting to watch as the law continues to play catch-up with technology.

 

Thanks to all of our readers in 2006.  We will continue posting in 2007.

Calgary - 09:25 MST

As our market-driven society evolves, branding will present an ever-growing challenge.  How do you distinguish yourself from a field of competitors and navigate through the minefield of existing trade-marks?  

Samsung tried to do that in early December when it launched its new BlackJack, a “smart” phone with email capability and QWERTY keyboard.  Competitors noticed.  In particular, one little Canadian company that makes a “smart” phone with email capability and QWERTY keyboard that you may have heard of: BlackBerry.  Last week, RIM sued Samsung for trade-mark infringement. BlackJack and BlackBerry.  Confusingly similar?  A California court will decide.  The lesson for business?  You better have a high degree of confidence in your trade-mark before you spend millions launching that next product.

 

In August 2006, Microsoft launched a series of lawsuits in the U.S. against alleged cybersquatters.  This in itself is not necessarily newsworthy, considering the number of battles Microsoft and other famous trade-mark owners have to fight on an ongoing basis to protect their trade-marks online.  In this case however, the sheer volume of registrations was noteworthy. The cybersquatters had registered hundreds of domain names which were variations and common misspellings of Microsoft’s trade-marks, such as microsoftnewssource.com, msninfoonline.com, freewindowslive.com and msnblog.com. 

This brand of cybersquatting might be called “next generation” since it doesn’t rely on the traditional method for profiteering.  Instead of making money by selling the infringing domain name back to the rightful owner, or to a competitor, the domains have value because of their ability to generate per-click ad revenue.  The infrining domains are parked at a generic page which lists ads, all of which will generate revenue when misdirected visitors click through in the search for the legitimate site or page they were looking for.  Multiply this by hundreds of domain names and bingo, you’ve got yourself a profitable side-line, all based on ad-revenue. 

The ad-driven frenzy is reflected in “domain kiting“.  Domain kiting or domain tasting is the practice of registering a domain name speculatively and testing the ability of that domain name to generate traffic (and ad revenue) during an initial registration period.  Most registrars offer a refund if a domain registration is cancelled during this initial period.  Cybersquatters are using this period to register thousands of domain names, test drive them, and return them if the profitability potential doesn’t justify the registration cost. 

Microsoft, like other trade-mark owners, is using all legal means available in the battle against online trade-mark infringement, including UDRP complaints, and lawsuits based on trade-mark infringement and the US Anti-Cybersquatting Consumer Protection Act .  In Canada, there is no corresponding statute, so trade-mark owners must decide between the Trade-marks Act and the CDRP .  Microsoft lost one battle under the CDRP involving a .CA domain name. The domain name msnsearch.ca was registered by Canadian company Microscience Corp.  Microsoft alleged the domain name was confusingly similar to its MSN family of trade-marks.  Microscience fought back.  In the decision the panel agreed that there was confusing similarity, Microsoft lost on the grounds that there was no “bad faith” on the part of Microscience since it was not a competitor of Microsoft and the registration did not prevent Microsoft from registering its own trade-marks as a domain name.

The lessons?  Cybersquatters move fast and trade-mark owners have to educate themselves on the legal tools available to play hardball in these domain name games.  The tools include arbitration under the applicable dispute resolution policy, and litigation using trade-mark laws in the country having jursidiction over the infringer. 

Calgary – 13:02 MST

In the holiday spirit, we can’t resist analyzing the intellectual property rights in the Grinch. How did a grouchy green cave-dweller become a multimillion dollar IP asset? 

Copyright

The original book “How the Grinch Stole Christmas” was written in 1957 by Theodor S. Geisel under the pseudonym Dr. Seuss. The copyright in the character and the related trade-marks is owned by Dr. Seuss Enterprises L.P., a California limited partnership created after the author’s death to handle licensing of the Dr. Seuss empire. The copyright in the original book is owned by the publisher, Random House Inc. 

An animated television special was created in 1966 by Metro-Goldwyn-Mayer, Inc., now part of the Time Warner empire; the copyright in the television production is now owned by Turner Entertainment Co.  The copyright in the music in the television production (based on the book) was originally owned by Metro-Goldwyn-Mayer, Inc. as employer for hire of Theodor S. Geisel and Albert Hague. RCA Records published a compilation of songs from the television production. 

In 2000, the movie rights were acquired by Universal and the copyright in the movie “Dr. Seuss’ How the Grinch Stole Christmas!”, directed by Ron Howard, is owned by Luni Productions, a Universal production company. A novelization of the movie (based on the original book) was written by Louise Gikow and copyright is owned by Universal Studios Licensing Inc.

Inevitably, someone decided that the story was fit for a musical production: “Dr. Seuss’ How the Grinch Stole Christmas! The Musical” opened in San Diego in 1998 and moved this year to Broadway.  The copyright in the musical (lyrics and music) is owned by Timothy Mason and Mel Marvin.

All under license of course.

Trade-marks 

The word GRINCH is a registered trade-mark of Dr. Seuss Enterprises L.P. in Canada.  In the US, the GRINCH trademark was registered by Dr. Seuss Enterprises LP in 2000 for T-shirts, shirts, tops, sweaters, hats, headwear, aprons, sweatshirts and any other merchandising category you could think of. Interestingly, an individual by the name of John Christopher Chlebowski, Jr. obtained the first trademark registration for the word GRINCH, claiming a date of first use in 1991 for “entertainment, namely, live performances by a musical band.”

Domain Names

The domain name grinched.com  is owned by Universal Studios for use with its movie-related website, under license from Dr. Seuss Enterprises.  The domain name howthegrinchstolechristmas.com is registered by an unknown registrant and currently resolves to a “domain for sale” site (which would make a good case for “bad faith” registration under the Uniform Dispute Resolution Policy arbitration procedure).

Patents

The Grinch is mentioned in several U.S. patent applications, although no-one has yet found a way to make the character himself the subject of a patent.  For example, United States Patent No. 6,982,780 (filed by inventors Steven Morley, et al.) which issued on January 3, 2006, claims patent rights in a method for creating a playlist for a digital cinema system.  The work “How the Grinch Stole Christmas” is mentioned in the claims description as an example of the use of the invention.

Licensing

Dr. Seuss Enterprises L.P. with Audrey Geisel at the helm, appears to control all trade-mark and copyright licensing of the original Grinch character and related paraphernalia as well as the entire Dr. Seuss line of products, and has licensing deals for countless spin-off products.  The movie licensing is handled by Universal Studios Licensing, Inc., which is itself originally under license from Dr. Seuss Enterprises L.P.   Although Dr. Seuss died in 1991, he has consistently made the Forbes list of top-earning deceased celebrities due to the marketing engine of Dr. Seuss Enterprises L.P. It generated $10 million last year.  For the movie version of the Grinch, the licensing company took 4 percent of the box-office gross, 50 percent of the merchandising revenue and music-related material, and 70 percent of the income from book tie-ins.  We haven’t even touched on the licensing for Universal’s theme-park.

Infringement

Alas, we have uncovered no Grinch lawsuits, although few literary characters would be more suitable as a plaintiff.  It seems to us that Mr. Chlebowski, armed with a trademark registration for the word GRINCH in association with “entertainment, namely, live performances by a musical band” would have a claim against the producers of the live musical version of the Grinch story, but we have seen no effort on the part of Mr. Chlebowski to pursue that action. Perhaps the prospect of shutting down a family Broadway musical during the Christmas season is a bit too unpalatable, even for a GRINCH trademark owner.

Calgary - 23:11 MST

The Canadian trade-mark RIDENT for golf clubs is confusingly similar to the US trade-mark TRIDENT for golf clubs.  That’s the easy part.  Now, how do you confine a Canadian company from selling its RIDENT brand golf clubs over the internet to US consumers who may be familiar with the rival TRIDENT brand?  We’ve got e-commerce, intellectual property rights and court orders.  Just the thing to take to the Supreme Court of Canada.

In Pro Swing Inc. v. Elta Golf Inc. 2006 SCC 52, the Supreme Court of Canada (SCC) tackled this problem on a number of levels.  Pro Swing, owner of the TRIDENT trade-mark in the US, initially obtained an order from a US court, stipulating that the Canadian company, Elta Golf, should cease sales of RIDENT brand golf clubs into the US.  But in practical terms, the court order was only enforceable in the US and Elta Golf was an Ontario-based company.  Pro Swing commenced a lawsuit in Canada to enforce its US judgement. 

Traditionally, foreign judgements can be enforced in Canada where they are a final order to pay a defined sum of money.  Or put another way, where compliance is relatively easy to enforce and monitor: either the money has been paid, or it hasn’t.  In the Pro Swing case, the US order was a “foreign non-monetary judgment”.  In other words, it carried with it a number of non-monetary orders and stipulations.  The SCC has now clarified that these types of orders can be enforced in Canada. Unfortunately, the court was split on when they should be enforced. Here are some of the factors the Canadian court will take into consideration:

●       are the terms of the foreign order clear enough?

●       is the foreign order sufficiently limited in scope?

●       is it a final order?

●       is enforcement of the order a justifiable use of Canadian judicial resources? 

In the end Pro Swing’s US judgement was not enforced by the court. The lessons for business?  First, foreign litigants seeking to enforce their foreign judgements in Canada now have a greater range of options available to them; they are not confined to monetary orders alone.  Secondly, because of the thicket of issues which a Canadian court will consider, it is wise for US counsel to seek advice from Canadian counsel prior to drawing up the terms of the US order to ensure it stands the greatest chance of enforcement in Canada.  Third, in practical terms, the world of e-commerce just got a little cozier: cross-border business and internet sales mean that Canadian and US companies will continue to come into conflict and this decision effectively shrinks the gap between foreign and Canadian courts.

Calgary - 09:59 MST

Can a director be personally liable for trade-mark infringement?  We raised this issue in our October 25th post. A recent Federal Court decision has re-examined this question.  Generally, directors and shareholders are considered to be legally separate from their corporation and are not personally on the hook for the debts or liabilities of that corporation.  If the corporation breaches its contractual obligations, defaults on a loan or infringes someone else’s intellectual property rights, then it is the corporation, not the individual, who is liable.

In the case of Petrillo v. Allmax Nutrition Inc., 2006 FC 1199 (CanLII), the plaintiff brought an allegation of trade-mark infringement against both the corporation and Richard Glover and Michael Kichuk, the directors of that corporation.  The individual defendants brought a motion to have the lawsuit dismissed against them personally.  They succeeded.  In coming to its decision, the court made several important points:

One, even though a small company may be controlled by one or two individuals who may function as shareholders, directors and officers, the authorization required for personal liability will not be inferred merely from the fact that a company is closely controlled.  Secondly, the court said that “it is not enough for a Plaintiff to assert personal liability on the part of an officer or director of a company in a statement of claim, in the hope that evidence to support the allegation will be uncovered during the discovery process.  A lawsuit is not a fishing expedition.” (at para. 36)

In the end, no evidence was brought forward to implicate the directors personally and so the lawsuit against them was dismissed. 

Calgary - 14:02 MST

The world of trade-marks is regulated by several underlying concepts. One such concept is that two similar or even identical marks can coexist as long as they are in different channels of trade.  This permits the trade-mark DELTA to be used by an airline, a water faucet manufacturer and a hotel chain without any confusion.  

In the recent decision in Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 2006 WL 3182468 (E.D. Va. 2006), this concept was put to the test in the internet context.  Are online sales a “channel of trade” for the purpose of determining whether two similar marks can coexist?  The famous hand-bag company sued a manufacturer of pet accessories (such as dog beds and chew toys) for trade-mark infringement.  Louis Vuitton alleged that the use of the mark CHEWY VUITON  infringed its LOUIS VUITTON mark.  Essentially, the court disagreed.  The fact that the sales of both the plaintiff’s and defendant’s products were made online was not, by itself, determinative of the issue.  The court looked at a number of other factors to determine whether the two marks were used in the same channel of trade.  

Trade-mark owners should police their marks and take steps to prevent infringers from trading on their reputation.  This U.S. case provides some guidance for Canadian businesses who are trading into the U.S. particularly in the ever-expanding internet and e-commerce context.  

 

 

The Vancouver Organizing Committee for the 2010 Olympic and Paralympic Winter Games (VANOC) owns the trade-marks related to the 2010 Olympic games – what they call the “Olympic Brand”.  VANOC has given notice of over a hundred marks already, all under Section 9 of the Trade-marks Act which is a unique category of trade-mark known as “official marks”.   Owners of official marks already have the benefit of some very special rights and remedies that the rest of us mere mortals can only dream of. 

According to their recent report, VANOC is now in discussions with the federal government regarding “special legislation to protect the Olympic Brand.” In their view, such legislation would be designed “to protect [VANOC’s] marks and to prevent or reduce ambush marketing of its sponsors during the period leading up to the Beijing 2008 Olympic Games through to the end of the 2010 Games.”  As if the strength of Section 9 marks is not enough they appear to be gunning for some new category of super-trade-mark.  Wouldn’t it be nice if every business could lobby the government for special legislation to protect its own collection of marks?  

Thanks to Neil Melliship for his post on this. 

If a company is sued for infringement of intellectual property rights, can the director be held personally responsible?  One of the benefits of incorporating a company is that the company’s shareholders and directors are not personally liable for the debts and liabilities of the company.  That’s a basic proposition of corporate law.  Of course, there are exceptions.  In the 2006 decision in Krav Maga Enterprises, LLC v. Edge Combat Fitness Inc., the Federal Court allowed the addition of a director in a lawsuit for trade-mark infringement.  Essentially, if the director or officer is engaged in “deliberate, willful and knowing pursuit of a course of conduct that is likely to constitute infringement or reflects an indifference to the risk of it” then the director can be tagged with personal liability.  This is not a new idea.  The Federal Court of Appeal has established this type of liability in cases such as Mentmore Manufacturing Co. Ltd. v. National Merchandise Manufacturing Co. (1978), 40 C.P.R. (2d) 164 in a case of patent infringement and another decision of the Federal Court adding a personal defendant in Dimplex North America Ltd. v. Globaltec Distributors Ltd. from 2005, a case also alleging patent infringement. 

Battles for internet real estate are often fought in the domain name arena.  This is a hybrid world full of acronyms (UDRP, CDRP, CIRA, ICANN…) which was created just for the resolution of domain name ownership disputes. Who is entitled to own a domain name and what mechanism is used to resolve such a dispute? To answer this question, the domain name dispute resolution system was created.  In Canada, disputes over .CA domain names are governed by the CIRA Domain Name Dispute Resolution Policy, which is commonly referred to as the CDRP. 

In October 2006, the CDRP decision in Wrigley Canada Inc. v. Brain Wave Holdings Inc. was released. Remember, this is not a court decision.  This is an arbitration process unique to domain names which operates outside the Canadian court system.  This dispute involved the domain name candystand.ca.  Specifically, Wrigley, the candy king, alleged that the domain name was registered by Brain Wave Holdings in “bad faith” and should be transferred to Wrigley.

Brain Wave Holdings, a Kelowna, B.C. company, registered the domain name in July 2002.  The registrant used the site as a kind of portal to other candy-related sites or links. 

Wrigley alleged that the registrant registered the domain name in “bad faith” to prevent Wrigley from obtaining the domain name, and that the registrant lacked legitimate interests in the domain name.  Wrigley pointed to its own site at www.candystand.com and its US registered trade-mark CANDYSTAND.  Wrigley did not have a Canadian trade-mark registration and so had to rely on its unregistered or common-law rights to the mark CANDYSTAND in Canada for the purposes of this dispute. 

Brain Wave Holdings countered, saying that the word CANDYSTAND is descriptive or generic and that no-one should be entitled to a monopoly on such a descriptive term. This seems like a good argument to me, and given the use of the domain name by the registrant as a portal to candy-related sites, it might appear that the registrant was making a legitimate use of the domain name.  It would be like using the domain name breadbox.ca as a portal to bread-related products. Who could claim rights to such a generic term?

Wrigley could. And did, successfully in this case.  By submitting evidence of the strength of their mark and the popularity of their candystand.com site (4 million visitors a month) they showed that it was unlikely that the registrant was unaware of Wrigley’s rights at the time the name was registered.  They clinched the case when they showed that this registrant had a prior history as a cybersquatter.  Instead of an innocent mom-and-pop candy-store operator in Kelowna, they painted the registrant as a notorious cybersquatter who must be up to no good.  These factors convinced the arbitration panel that the domain name should be transferred to Wrigley. 

1 comment

Calgary – 22:09 MST – Many companies want some basic guidance on trade-mark usage. This discussion provides some practical tips and information on trade-marks in Canada.

Q: What is a trade-mark?

A: A trade-mark is a brand name which distinguishes one company’s products or services from the products and services of all the competitors in the marketplace. It’s a way of identifying which product or service comes from which company or “source”. The most common forms of trade-mark are logos or designs (for example, the Nike swoosh or the Royal Bank lion), letters or initials (such as IBM or DKNY) or slogans (such as “Don’t leave home without it” or “The breakfast of champions”). Successful trade-marks are valuable assets of their owners which convey a secondary meaning to consumers.

Q: How are trade-marks created?

A: Trade-marks are created through use. In this sense, “use” refers to use of the mark by the trade-mark owner in association with the sale of the owner’s products and services. Registration is not required for a trade-mark to exist, although registration is recommended. When you apply to register your trade-mark, your trade-mark agent will ask you about the “date of first use”. In other words, the question is “When did you start using your mark in the sense of selling products or services in association with that mark?” It does not refer to the date when you first had the idea for your mark, or the date business cards were printed, or any number of other points which might be mistaken for actual “use” in this sense. To document your use of the trade-mark, keep copies of invoices, hang-tags, labels, copies of advertising, pictures of signage and other indicators which coincide with the date of sales of your products or services using that mark.

Q: When do I use the “TM” and the ®?

A: This is a common question. In Canada, the Trade-marks Act does not refer to the TM or ® symbols. Customarily, the TM symbol is used to designate unregistered trade-marks and the ® is used with registered trade-marks. If you have a registered trade-mark, always use the ® symbol, to put the world on notice that you have registered trade-mark rights in connection with that mark. If your mark is unregistered, then use the TM as a way of indicating your intention to protect the mark. For those trading into the United States, we recommend using the ® symbol only in association with a mark registered in the US. The use of the ® symbol in the US for a mark which is not registered in the US can be considered a type of offence under what is essentially consumer-protection legislation.

Q: What’s the difference between a registered trade-mark and one that isn’t registered?

A: A mark can be unregistered and still be a valid trade-mark. This is known as a “common law” mark. A trade-mark owner enjoys more benefits and rights of enforcement under the Trade-marks Act if the mark is registered.

Q: What happens in the registration process?

A: The registration process starts with searches to determine the availability and registrability of the proposed mark. A trade-mark agent will typically render a report or opinion on the availability and registrability of the mark. If the path forward is clear, an application is prepared in a particular form, and submitted to the Trade-marks Office (the Canadian Intellectual Property Office) for examination. An examiner at the office will review the application and if there are no objections to registration (for example, an objection based on the similarity of the proposed mark with an existing mark owned by someone else), the mark will proceed. The examination process ends in “advertisement” of the mark which refers to the publication of the proposed mark (along with all the other proposed marks which are being applied for) in the Trade-marks Journal. A third-party (usually a competitor) may take the opportunity to oppose the application if the mark is confusingly similar to an existing mark, or if the mark is vulnerable to attack on any number of other grounds of opposition. Assuming there is no opposition or the opposition challenge is defeated (or a negotiated settlement is reached) the mark may proceed to allowance and ultimately registration. The whole process can take 12 – 18 months.

Q: Can others use my trade-mark?

A: In short, no-one else should use a mark without the permission and control of the owner. This goes for business partners, affiliates, joint-venture partners, distrubutors, even subsidiaries. Any use by someone other than the owner can jeopardize the mark. All such uses by others should be properly controlled and documented with properly-drafted Trade-mark License Agreements.

Q: Can you give me some tips on trade-mark usage guidelines?

A: Yes, tips on trade-mark usage will appear in future posts!