intellectual property news
Coastal Trademark Opens Satellite Office!
Coastal Trademark Services is proud to announce that we have recently opened a satellite office in British Columbia’s beautiful Okanagan region, in the city of Kelowna.
Our head office, which will remain in Vancouver, has been earning the trust and respect of some of North America’s leading law firms and companies in industries such as manufacturing, pharmaceuticals, and technology. We will now be positioned to service our expanding portfolio of Okanagan clients including law firms, retail and, of course – wineries! Kelowna is one of Canada’s fastest growing cities and Coastal Trademark Services looks forward to providing our interior clients with the same personalized, efficient, and cost-effective approach to service as we have for our clients on the coast for over 25 years.
As owner of Coastal Trademark Services, I will be travelling between the Vancouver and Kelowna offices, following my passion for trademarks and dedication to high quality service. To grow, every company must innovate, respond to market demands, and be consistent in their service levels. We remain committed to providing you with strategic and practical solutions for your trademark needs.
We wish to extend our thanks for your continued support throughout these years. We are really proud to be part of your success stories and business growth. If you know of any law firms or companies in the Okanagan who would benefit from our personalized trademark expertise, please feel free to let us know. We appreciate the opportunity to grow our community of like-minded professional companies.
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.
Why Your Brand Needs Innovation
You probably invest a lot of money protecting your brand, because it’s a point of differentiation between you and your competition. But what happens when the category you exist in starts to change around you? And while the brand loyalty you’ve built among your users is strong, their presence is diminishing.
That’s when the notion of innovation becomes a strategic priority for most organizations. Innovation, though, is a term that is widely used and is often ambiguous. Even though organizations acknowledge that to maintain growth, innovation is essential, most organizational teams don’t know how to execute it, strategically.
You may think that innovation has to be disruptive in nature to be a true innovation, like Apple’s iPod or Dyson’s vacuum, but disruptive innovation requires a massive appetite for risk, which most organizations avoid. There is, however, the alternative “small i” innovation, focused on delivering incremental results.
Small i innovation combines leveraging existing assets with applying fresh inspiration to spot new opportunities within existing markets. Two examples of incremental innovation are TD Canada Trust’s mortgage vacation, based on the customer insight that sometimes people just want to take a break from their payments, and Molson Canadian’s new Wheat beer, based on the insight that consumers want to try fresh, new flavours with a brand they trust. By understanding user needs, both organizations built a product that evolved their brand through relevant innovation.
Innovation focused on growing your brand can easily be applied through a few simple steps: focus, exploration, insights and ideas. It’s a simple formula that has successfully grown market share for companies like Reckitt Benckiser, Revlon, Molson-Coors and TD Bank. Now, what’s stopping you from building your brand through innovation?
This article was written for Coastal Trademark Services by Colleen Reitzel, Director at Happen. Happen specializes in Insight, Innovation, NPD, Brand Positioning, Strategy, Technology and Commerce.
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.
The Trademark Clearinghouse – What Brand Owners Need to Know
In anticipation of the new generic top-level domains, the Trademark Clearinghouse is designed to provide some protection for holders of registered trademarks.
The current Internet Domain Name System features just 22 generic top-level domain names (gTLDs), including .com, .net., .org, and .biz. In 2012, the international body that oversees the use of Internet domains, known as ICANN, began accepting applications to register new gTLDs.
According to ICANN, nearly 2,000 applications to register new gTLDs were received during the application window. Examples of the applied-for gTLD strings are .amex, .book, .fashion, and .google (for a full list, click here). ICANN expects the first new gTLDs to be delegated as early as April 23, 2013.
The launch of the new gTLDs is expected to bring with it an increase in cybersquatting and trademark infringement.
What is the Trademark Clearinghouse?
The Trademark Clearinghouse is a central database of validated trademarks designed to help protect the rights of brand owners within the new gTLD program.
For a fee, trademark holders may submit their trademark(s) for validation directly with the Clearinghouse, or have a Trademark Agent do so on their behalf.
What are the Benefits?
All new gTLD registries will be required to interface with the Trademark Clearinghouse. This means that once your trademark is submitted to and validated by the Clearinghouse, you will not need to monitor the launch of each new gTLD or register in multiple databases to access the following services:
i) Sunrise Service – gives you priority access to register a domain name that matches your trademark for all new gTLDs as they are launched, before domain names are offered to the general public.
ii) Trademark Claims Service – potential domain name registrants will receive a warning notice if their chosen domain name matches your trademark. If they proceed with the registration, you will be notified. This does not stop others from registering your trademark as a domain, but may alert you to potential infringers so that you can take any appropriate action.
When Should You Register?
There is no deadline per se. The Trademark Clearinghouse opened for registrations on March 26, 2013. As the date of the first sunrise period has not yet been confirmed, you still have time to take full advantage of the Clearinghouse.
Now is a good time to review your trademark portfolio, update any ownership information, compile evidence of use, etc.
What if you don’t have a registered trademark but want to take part in the Clearinghouse?
While there are exceptions, unregistered trademarks are not generally eligible for the Trademark Clearinghouse. If you have not done so already, you should speak to a Trademark Agent about filing applications to register your important marks.
Even if you don’t ultimately record your mark with the Trademark Clearinghouse, a trademark registration carries a myriad of benefits. Should you require information on the trademark registration process, please contact one of our Registered Trademark Agents.
Case Law Update: Foreign Use & Registration Claims in Canadian Trademark Applications
In Canada, applicants may rely on one or more bases when filing a trademark application, including use in Canada, proposed use in Canada, and foreign application/registration and use. The latter basis permits foreign applicants who own a corresponding registration in their country of origin and who have used the trademark in any foreign country to obtain a registration in Canada without having used the trademark in Canada. The material date for establishing use abroad has been a source of debate amongst trademark practitioners, and was recently addressed by the Federal Court in The Thymes, LLC v. Reitmans (Canada) Limited, 2013 FC 127.
Before addressing the court’s decision, it may be helpful to review the relevant legislation.
Section 16(2) of the Trade-marks Act reads as follows:
(2) Any applicant who has filed an application in accordance with section 30 for registration of a trade-mark that is registrable and that the applicant or the applicant’s predecessor in title has duly registered in or for the country of origin of the applicant and has used in association with wares or services is entitled, subject to section 38, to secure its registration in respect of the wares or services in association with which it is registered in that country and has been used, unless at the date of filing of the application in accordance with section 30 it was confusing with
(a) a trade-mark that had been previously used in Canada or made known in Canada by any other person;
(b) a trade-mark in respect of which an application for registration had been previously filed in Canada by any other person; or
(c) a trade-name that had been previously used in Canada by any other person.
Section 30 of the Act reads as follows:
30. An applicant for the registration of a trade-mark shall file with the Registrar an application containing
(d) in the case of a trade-mark that is the subject in or for another country of the Union of a registration or an application for registration by the applicant or the applicant’s named predecessor in title on which the applicant bases the applicant’s right to registration, particulars of the application or registration and, if the trade-mark has neither been used in Canada nor made known in Canada, the name of a country in which the trade-mark has been used by the applicant or the applicant’s named predecessor in title, if any, in association with each of the general classes of wares or services described in the application;
In Thymes, the applicant filed an application in Canada claiming a) proposed use and b) use and application in the United States. The Federal Court upheld the decision of the Opposition Board to reject the second filing basis, as the applicant was unable to establish use in the United States as of the Canadian filing date.
In explaining the Court’s decision, Justice Manson noted that “the material date for determining compliance with section 30 of the Act is the date the application was filed” and stated the following in reference to Section 16(2) of the Act:
“There is no doubt a proper reading of that section requires that, at the time of filing the application, if an applicant relies on registration or application and use abroad pursuant to that section, there must have been use of the trade-mark at the time of the application to rely on this section as a valid basis to obtain registration in Canada.”
He went on to say that “further, the last portion of section 16(2) of the Act, namely: ‘unless at the date of filing of the application in accordance with section 30’, also supports the view that both section 16 and section 30 requirements must exist and be reviewed as at the date of filing the application.”
It is difficult to argue with the decision as it relates to the particular facts of this case – in Thymes, the 16(2) claim was made before there had been any use of the mark in the US. What is notable is the breadth of the language used by Justice Manson, as it may be interpreted to mean that use as of the Canadian filing date is required for a valid 16(2) claim, regardless of when the claim is made.
It has been common practice for many Canadian trademark practitioners to amend applications after filing to make a claim under 16(2) in situations where foreign use commences after filing but before advertisement. In that case, the applicant can credibly claim foreign use and application/registration prior to the filing date of the revised application. The Federal Court’s decision casts doubt on whether such claims will hold up in an opposition proceeding.
At Coastal, it has long been our practice to only rely on use and registration abroad when the following conditions are met at the filing date of the Canadian application (or priority date, if applicable):
i) a corresponding application or registration exists in the applicant’s country of origin, and
ii) the applicant has used the mark with the wares and/or services in any country.
At least until the scope of the Thymes decision is tested, a cautious approach will help safeguard clients’ applications and registrations from opposition or cancellation for invalid 16(2) claims.
It’s a New Year. Time for a Trademark Audit?
Now is the time when many of us are making goals and plans for the coming year, both on a personal level and in our businesses. In the course of developing your business objectives, it would be a good idea to consider a trademark audit.
A trademark audit involves a review of your trademarks and existing applications and registrations to take stock of your assets as well as identify any vulnerabilities or deficiencies in protection. A trademark audit should be conducted on a regular basis – once a year at a minimum for most brand owners. The following are just some of the reasons to conduct a trademark audit.
1) Identify new trademarks
Have you recently adopted a new name, logo or tagline? If so, it may be prudent to file applications to protect the new marks. Are you in the process of re-branding? Trademark clearance searches should be conducted to identify potential obstacles and risks associated with any new marks under consideration.
2) Identify gaps in trademark protection
Do you currently have applications or registrations for all of your important trademarks? You may have already protected your primary brand with a word mark, but are you using a distinctive logo, tagline or product name that also needs protection?
Do your current registrations cover all of the goods and services that you provide in association with the trademark(s)? Business focuses change over the years. You may think the trademark registration you obtained years ago is sufficient because your trademark hasn’t changed. However, if your products and/or services have changed or expanded, there is a good chance that your existing registration is not giving you the protection you need. You may need to consider filing a new application or expanding your existing registration to cover the new products and services.
Do you have registrations in all of the countries in which you do business? Many businesses disregard the importance of registering their trademarks in other countries, or put off foreign applications for budgetary reasons. Doing so may force you to deal with disputes in foreign countries that are extremely costly and time consuming and/or may require you to re-brand in certain parts of the world. If you are doing business or planning to do business on an international scale, now is the time to consider an international trademark strategy.
3) Identify vulnerabilities in your existing applications and registrations
Did you file your own trademark application? Some people try to save money by filing their own trademark application rather than using a registered Trademark Agent. While you can obtain a registration this way, you may not realize until it is too late that mistakes were made at the time of filing that left the registration at risk of being invalidated. Now is a good time to have a Trademark Agent review your applications and registrations to identify any vulnerabilities, and implement a plan to correct them.
Are your trademarks still in use? Trademarks become vulnerable to expungement if they are not used for a period of 3 or more years. If you have registrations that you would like to maintain but that you are not currently using, find a way to incorporate the marks into your product packaging (for goods) or marketing materials (for services).
Have you made changes to trademarks that you have already registered? As a general rule, trademarks should be used exactly as registered or the registration will become vulnerable to expungement. If you have made any modifications to your trademark, including addition or removal of words or adjustments to the design or the layout of the mark, it is a good idea to consult with your Trademark Agent to determine whether a new application is appropriate.
Do you have documentary evidence of trademark use? If it comes time to defend or enforce your trademark rights, you will want to be able to produce documentary evidence supporting your trademark use dating back to the date of first use. If you are unsure what qualifies as suitable evidence, a Trademark Agent can advise you.
4) Update Ownership and Contact Information
Have you moved or changed your corporate name? Name and address changes should be recorded at the various trademark offices where you have applications and registrations. It is also important for your Trademark Agent to have your current contact information to avoid missed deadlines and inadvertent loss of rights.
Has the owner of the trademark changed? It is always a good idea to document any transfers of ownership with formal assignment documents. Assignments should also be recorded at the relevant trademark offices.
Do you have a designated point person for trademark matters within your company? Due to changes in personnel, the person who originally dealt with trademark matters may no longer be with your company, leaving you in the dark about your existing rights and what deadlines may be coming up. Designate a new point person and have that individual reach out to your Trademark Agent. Your Agent can provide an updated status report and advise on any upcoming deadlines and outstanding issues.
In addition to the above, a thorough trademark audit should incorporate the following:
– monitoring for infringement and taking appropriate steps to stop infringers
– reviewing existing license agreements to ensure they are up to date and in order
– following up with licensees to confirm they are using the marks as authorized and meeting designated quality control standards
If it has been a while since you last audited your trademark portfolio, now is the time to reach out to your Trademark Agent.
Coastal Trademark is on the Move!
Coastal Trademark Services is excited to announce that we will be kicking off the New Year in new office space! We are currently busy redesigning our space and will be pleased to welcome you to our Yaletown office effective January 2nd, 2013.
Please take a moment and update your address books:
Coastal Trademark Services
1081 Cambie Street
Vancouver, BC V6B 5L7
Phone, fax and emails will all remain the same.
We would like to take this opportunity to thank you for your support in 2012 and wish you and your loved ones every happiness this holiday season and throughout the coming year.
Coastal Trademark Holiday Hours:
Please note, although our office will be closed over the holidays (from December 24th at noon through to January 2nd), in case an urgent matter arises, Tanya and Jenn will be monitoring emails during our closure. Please feel free to contact them by email. Warm regards, Tanya, Penny, Deanna, Jenn, Anna, Robyn, Kristy and Ana