As Your Business Evolves So Should Your Trademark Strategy
Successful businesses evolve to meet the changing needs of their customers. This can take the form of new and innovative product and service offerings. It can also involve new or updated names, logos and slogans. Too often, businesses neglect the need to shore up their trademark rights during this process. The following are some key points to consider from a trademark perspective as your business evolves:
When Introducing New Products and Services – The fact that you have a trademark registration or have been using your trademark for a long time does not mean that you are protected if you decide to move into a new field. Review your existing registration(s) to determine whether the wares and services descriptions are broad enough to capture your new products and services. If not, have a clearance search conducted to determine whether the path is clear to move into the new line of business with your current trademark. If the path is clear, file a new trademark application or application to extend an existing registration to cover the new products and services.
When Adopting New Trademarks – You’ve come up with a clever name for a new product line, or a catchy slogan for your new services. Protect that mark by having a clearance search conducted and, if the path is clear, file an application to protect the new mark.
When Updating Your Trademarks – Most brands go through some form of a refresh or modernization at some point. Perhaps your original logo does not reflect the new direction of your business, or is an out of date design that doesn’t resonate with your current customer base. Depending on the significance of the changes to your marks, you may need to file new applications to protect the updated trademark(s).
When Expanding to New Regions Within Canada – If you have registered your trademark(s) with the Canadian Intellectual Property Office, good news – you have secured your rights across the country. If not, you run the risk of violating someone else’s trademark rights in the new areas where you plan to do business, unless you take steps to clear and secure your rights.
When Expanding to New Countries – A trademark registration in Canada does not protect you in the United States, Europe, China, etc. Before you expand to new countries, first ensure that no one has prior rights in your mark(s), and then secure your rights by filing applications for all important marks.
Using a trademark that has not been properly cleared is a risk. If someone else already owns an identical or confusingly similar mark, you may find yourself faced with a lawsuit. Having to change a trademark after you have started using it can be expensive, disruptive to business, and can waste the goodwill you have acquired in the brand. Failing to register your marks for all of your products and services can restrict your ability to expand to new areas and enforce your trademark rights against third parties.
At Coastal Trademark Services, we can assist your business by performing the necessary clearance searches and protecting your trademarks in Canada, the United States and abroad.
Proper Trademark Usage – Part 2
In Part 1 of our ongoing series on Proper Trademark Usage, we discussed the use of trademark symbols. Part 2 of our series discusses a number of reasons why trademarks should be used consistently and as registered:
1. To maintain brand identity
A trademark is a shortcut that helps consumers distinguish your products and services from those of your competitors. If your mark is frequently changing, it will be more difficult for consumers to make the mental association with your products and services.
Having a brand manual or style guide that outlines exactly how a mark should be used is a good idea, particularly when you are licensing your mark for use by different entities. See Twitter’s Trademark and Content Display Policy as an example: https://twitter.com/logo.
2. To protect the validity of your trademark registration
If the trademark you are currently using has significantly deviated from the mark that you registered, your registration is at risk of being expunged for non-use.
If your mark doesn’t match what appears on your Certificate of Registration, consider filing a new application for the updated version of the mark.
3. To protect your ability to enforce your trademark rights
Trademark disputes are often decided based on who has earlier rights in a mark.
If, in the past, you were using one mark, and over time you added, removed, changed, or rearranged elements of the mark, you may have actually lost any rights in the original mark.
In that case, you will not be able to claim rights dating back to that original use, and your entitlement date will stem from when you started using the latest version of the mark. A later entitlement date may put you at a disadvantage in a trademark dispute.
Filing a new application each time your mark is updated will ensure that there are no gaps in your trademark protection.
How much deviation is acceptable?
Most brands will at one time or another go through some form of an update, whether it is a simple tweak, a refresh, or a complete brand overhaul. Whether the new look will support an old registration depends on the extent of the change.
Have the dominant features of the mark been preserved? Are the differences so unimportant that a consumer would still assume that the marks identify goods of a common origin? If so, your old registration should offer sufficient protection.
In a well known Canadian trademark case, the use of a “slim” penguin was sufficient to maintain a registration for a noticeably more rotund penguin, where the dominant features of the mark were retained (see Promafil Canada Ltée v. Munsingwear Inc. (1992), 44 C.P.R. (3d) 59 (FCA)).
In another case, the Board found that use of a design mark in which the word SUN appeared above the word EXOTIC within a sun and rectangle design was not use of the registered word mark SUNEXOTIC because “the trade-mark had lost its identity and did not remain recognizable in the form as used” (see Oyen Wiggs Green & Mutala v. Rubicon Products Ltd. (2007), 65 C.P.R. (4th) 54 (TMOB)).
Changing the colour of a trademark will not impact the validity of a trademark registration that was filed in black and white. However, if your registration included a colour claim, it may be necessary to re-file if you have changed your mark’s colour scheme.
Predicting what the Trademarks Office will consider an “acceptable deviation” is not an exact science. When in doubt, the safest approach is to re-file.
Brand identity and maintenance of trademark rights are good reasons to avoid altering your trademark. However, when it is ultimately time for a brand refresh, having a trademark filing strategy in place will safeguard your rights during the transition and beyond.
Recent Changes to Trademark Law in China
It has long been a complaint of companies doing business, or wanting to do business, in China that Chinese trademark law does not do enough to protect the rights of brand owners.
Legislative amendments were recently passed in China that are intended to strengthen protection for brand owners, discourage trademark infringement and unfair competition, extend protection to non-traditional marks, and streamline registration and opposition processes.
Highlights of the changes that will come into effect on May 1, 2014, are as follows:
1) Harsher Penalties for Infringers
Infringers will face increased fines based on revenue from the illegal use of a trademark. Repeat infringers will face heavier fines.
Maximum statutory damages have also been increased from 500,000 yuan (approximately C$84,000) to 3,000,000 yuan (approximately C$500,000). The maximum compensation can be tripled if it is determined that the infringement was committed in bad faith. The definition of “bad faith” must still be clarified.
Another welcome change is that infringing companies can be forced to disclose sales records for the assessment of damages. If the infringer refuses, damages can be awarded based on the claims of the trademark owner.
2) Good Faith Provisions
The new law contains a provision that trademark applications must be used and registered in good faith.
The amendments provide a means for trademark owners to oppose the registration of identical or similar marks by distributors, manufacturers, or others with whom they have a prior relationship.
The new law also places obligations on trademark agents to act in good faith, e.g. by not handling a trademark application when the agent is aware that the client is acting in bad faith or infringing another party’s rights.
3) Multiclass applications are permitted
Applicants will no longer need to file separate applications for each international class of goods and services. We are hopeful that this will mean reduced costs for our clients who have goods and services in a variety of classes.
4) Trademark Examination Timelines
Timelines have been set out to shorten the registration process. Under the new law, the timeline for the initial examination of an application is nine months.
5) More Limited Right to Oppose
Oppositions based on relative grounds, including confusion with a prior right, may only be filed by the owner of the pre-existing right or an interested party. Prior to the changes, anyone could oppose on relative grounds.
6) Removal of the Opponent’s Right to Appeal Registration
If the opposition is decided in favour of the applicant, the mark will proceed directly to registration with no opportunity for the opponent to appeal. The opponent may file an invalidation action post-registration. However, the opponent would be at risk of infringing the applicant’s trademark until a decision to invalidate the registration is rendered.
This change was presumably meant to restrict vexatious oppositions, but has been criticized for ostensibly favouring bad faith applicants. As a result of this change, opponents will need to place greater emphasis on putting their best case forward at the opposition stage.
7) Registration of Sound Marks
Under the new law, sound marks are now eligible for registration.
8) Well-known Trademarks
The amendments clarify how and when a trademark will be recognized by authorities as a well-known trademark and prohibits the use of the term “well-known trademark” on products, packaging and advertising.
Overall, the changes appear to move China’s trademark law in the right direction, although the full impact of the law will depend on how it is applied in practice.
Proper Trademark Usage – Part 1
Marking: What Those Symbols Mean and When to Use Them
Trademark marking refers to the use of symbols or other designations to indicate trademark rights. We have all seen symbols such as ™ and ® on products and advertising, but what is not always clear is the distinctions between them, and when they should and should not be used.
1) Types of Designations
The following are examples of symbols often seen in Canada:
|MC||Marque de commerce|
- TM (Trademark)
May refer to a registered or unregistered trademark, whether or not an application has been filed.
- MC (Marque de commerce)
French language equivalent of the ™ symbol. Commonly used in Québec. May refer to a registered or unregistered trademark, whether or not an application has been filed.
For packaging and advertising that is used in English and French speaking markets, it is not uncommon to see both English and French symbols, e.g. ABCTM/MC
- SM (Service Mark)
More common in the United States. May refer to a registered or unregistered trademark used with services, whether or not an application has been filed.
- ® (Registered Trademark)
Should only be used after a mark has registered, and only in relation to goods and services covered by the registration.
- MD (Marque Déposée)
French language equivalent of the ® symbol. Commonly used in Québec. Should only be used after a mark has registered, and only in relation to goods and services covered by the registration.
The above symbols should appear immediately following the trademark. Trademark rights can also be designated in footnotes or ownership legends, e.g.
ABC is a registered trademark of ABC Inc.
This is often preferred when the above symbols would be considered cumbersome or aesthetically displeasing.
2) What are the Canadian Requirements With Respect to Trademark Marking?
Simply put, the use of trademark symbols is not compulsory in Canada. The Trade-marks Act does not contain any requirements with respect to trademark marking. There is currently no legal obligation to use the above symbols, nor any legal repercussions for misusing them in Canada. That said, the above-mentioned trademark symbols are widely recognized in practice in Canada, and making proper use of them is advisable, for the reasons stated below.
3) Purpose of Trademark Marking
• Alerts the public to your trademark rights – puts third parties who may be considering adopting the same or similar marks on notice. In addition to serving as a deterrent to potential infringers, this public notice will, in some countries, entitle the mark owner to additional remedies in litigation.
• Shows that mark is not being used generically
• Set trademark content apart from surrounding text or graphic elements – This is useful when a mark is used in close proximity to other elements, to clearly identify the subject matter covered by a trademark.
4) International Considerations
Although Canada has no marking requirements, brand owners who do business in other countries need to be aware that marking laws will vary by country.
Some countries require that trademarks be properly identified as registered in order to be entitled to certain legal remedies. For example, in the United States, failure to give notice of the registered status of a trademark may limit the ability to recover damages and profits in an infringement suit.
Further, in some countries, false or misleading marking can result in claims of unfair competition, fines, and even imprisonment.
In the United States, improper use of the federal registration symbol ® that is deliberate and intended to deceive or mislead the public is fraud (TMEP §906.04). Thus, if a business is using the same marketing collateral in both Canada and the United States, but only has a trademark registered in Canada, the safest approach is to use the ™ symbol until such time as the mark has registered in the United States.
Although the ® is commonly used around the world, other symbols may be more appropriate in certain regions. For example, M.R. (“Marca Registrada”) is used in many Spanish and Portuguese speaking nations.
Because of these international differences, advertising and packaging may need to be customized to comply with local marking requirements. Since websites may be accessed from anywhere in the world, it may be advisable to have regional websites with a marking strategy tailored for each country.
It is best to consult with your Trademark Agent if you have questions concerning marking requirements in specific countries.
Why Do Successful Companies Choose Coastal Trademark Services?
We often get asked why companies choose Coastal for trademark registration and trademark services. Although we know that our personalized service is one of our hallmarks, we also pride ourselves on being recognized locally and internationally for our expertise in trademark registration and trademark enforcement. Here are just some of the reasons why successful companies choose Coastal for their trademark services:
1) Friendly, personal trademark service
Whether you are a multinational company with a sizable trademark portfolio, or a small business seeking brand protection for the first time, your business is important to us. We work closely with each of our clients to craft a trademark registration strategy that makes sense for their specific business needs. In our communications, we endeavour to strip away the ‘legalese’ and explain the trademark registration process in a way that is easy for either the experienced or novice trademark owner to understand. We like to get to know our clients and business partners. While email has become the standard mode of communication for most businesses, we recognize that a phone call or a face-to-face meeting is often the best way for us to truly understand one another.
2) Expertise – Our business is trademarks
Successful companies realize the importance of having the right person for the right job. By specializing in trademarks, we have the expertise necessary to advise you and guide you through the trademark registration process. At Coastal, we do not view trademark protection as an afterthought, but rather as an integral part of a company’s business plan. Trademarks are important business assets; we help our clients protect their value through strategic trademark registrations and effective trademark enforcement.
3) Practical, valuable trademark advice
Successful companies recognize that the value of good advice outweighs the cost savings of a do-it-yourself approach to trademark registration. We are equipped to advise clients of potential issues and risks that may be encountered before a trademark is used or an application is filed, so that valuable resources are not wasted developing and marketing a brand that may run into trademark registration or legal issues. Similarly, by ensuring that our clients’ trademark filings are done properly from the start, our clients are not wasting money on trademark registrations that don’t adequately protect their brand, or that will end up being unenforceable because of technical errors. We provide personalized, relevant advice on everything from trademark selection, clearance and use, to trademark registration, enforcement and licensing, to ensure our clients’ trademark rights are well-protected.
4) Reasonable cost for trademark registrations
At Coastal, we recognize that businesses both large and small must keep to a strict budget to remain viable. We work with our clients to develop an appropriate trademark registration strategy for their budget. We believe in straightforward billing practices to avoid surprises and “hidden fees”. Wherever possible, flat fees are quoted up front. Because of the nature of our business, we are able to offer trademark registration fees and rates that are lower than the average law firm. In cases where fees are billed on an hourly basis, our hourly rates are lower than most lawyers’ rates, resulting in significant cost savings compared to law firms. If you would like a quote for a trademark registration or other trademark services, please fill out our quote request form and one of our agents will get back to you within 24 hours.
5) Efficient trademark services
We understand that brand owners are busy and often on a tight schedule. Our streamlined business systems allow us to provide efficient service, while maintaining exceptional service standards. We aim to file applications for trademark registration within 24 hours of receiving full instructions from the client. We also monitor deadlines and take care of all communications with the Trademarks Offices so that our clients can focus on their day to day business.
6) Global trademark protection
We offer worldwide trademark representation. Through our years of operation, we have developed a network of trusted trademark professionals around the world who share our values. Because of our international relationships, we are able to effectively manage international trademark portfolios of any size. Our global services include obtaining trademark registrations, as well as negotiating international co-existence agreements and coordinating global enforcement efforts.
7) Multiple Trademark Agents
The Coastal Trademark Services team includes four registered trademark agents, each 100% dedicated to trademark work, along with experienced support professionals. Our collaborative team structure allows us to provide personal service, while also ensuring that there is always an experienced trademark agent available to answer your questions. We would be pleased to show you why so many great companies choose Coastal Trademark Services for the trademark needs.