Sweeping changes to Canadian trademark law are coming into force on June 17, 2019, that could impact your organization financially or legally. Now is a good time to identify registrable trademarks and to proactively review your trademark portfolio. We’ve put this post together to help educate you on trademarks and provide you with actionable steps that can be taken before these changes take effect.
Your brand is at the heart of your corporate image. It can be a driver of culture and serves as your identity to your clients and fans. The best way to protect your brand is to register your trademarks – word marks and logos. Look at Kim Kardashian proactively trademarking her children’s names: Saint, North, Chicago, True, and Stormi’s Names to protect the future business lines under those names.
A trademark registration grants you the exclusive right to use the trademark for your goods and services. You will be protected against other companies using your trademark and can prevent them for adopting similar trademarks that have the potential to confuse customers.
What if you do not protect your trademark? Well, then you are more at risk that somebody will try to trademark your name before you do, and you will need to go through expensive opposition and/or litigation proceedings in order to fight this trademark registration.
What is the difference between a trademark and a trade name?
A trade name is the name under which a company does business. If your company’s trade name is different from its legal name, you will need to register it as a trade name. Registering your trade name is not the same, however, as registering a trademark. The purpose of requiring companies to register their trade names is to create a public record that allows consumers to identify who is behind a certain trade name. It does not give you the same types of rights as a trademark registration does to prevent others from using confusingly similar names or brands. If you use your trade name in association with the goods and services you provide, you can, and should, register it as a trademark.
What can be trademarked in Canada?
Trademarks can be virtually anything you use to distinguish your goods and services from your competitors. They can be letters, digits, words, images, and symbols, or even shapes and sounds, or combinations thereof. From June 17, 2019 on, the definition of a registrable trademark in Canada will be expanded to include new non- traditional signs to include scents, tastes, textures, holograms, and three-dimensional and moving images (gifs). Please note that in some cases, it may be necessary to prove that the mark is distinctive of your goods and services.
1. Identify your trademarks
What makes you and your products recognizable? What are the trade names, brand names, logos, slogans, propriety colour schemes or designs, etc., you are currently using and are what is in the pipeline? Remember the non-traditional signs noted above that you will soon be able to register – don’t forget those! Are there specific goods and services that you use these marks on?
Is your mark available? Do a trademark availability search
A trademark search will help you understand what marks are already in use or have been the subject of a trademark application and is an important first step. You don’t want to spend time and resources developing your brand recognition only to find that you are not able to use or register it because you are infringing another’s trademark rights.
2. File promptly!
Avoid an increase in filing fees
Currently the Canadian Intellectual Property Office (“CIPO”) charges a $250 fee per trademark application. As of June 17, however, Canada is adopting the Nice Classification system for goods and services. This means that applicants will have to categorize their goods and services into the appropriate classes. This will come with a supplemental filing fee per class – $330 for the first class and additional $100 for each additional class. For example, if you file an application after June 17 with goods and services spread over 8 classes, you will pay CIPO an application fee of $1,030. The CIPO fee for the same application filed before June 17 would $250. Filing early could save a lot of money!
Prevent others from registering your marks in Canada
If you are currently using brand names in other countries, there will be an increased risk that trolls and squatters will try to register those brands in Canada to try and force you to negotiate with them when you want to enter the Canadian market. This is because under the new law, use will no longer be required in order to secure a trademark registration. This could lead to costly opposition proceedings to block such registrations before they issue or litigation to cancel registrations after the fact. Since these changes apply to applications that have already been filed, we are already seeing an increase in the number of questionable applications being filed. In view of these changes, being the first to file in Canada has never been as important as it is now.
3. File in multiple countries for less money
Consider filing an international application
Canada has finally joined the Madrid Protocol. This means that, if you want to protect your trademark outside Canada in other countries where you are using or will be using this mark, you now have the possibility to file one international trademark application in Canada as opposed to filing separately in different countries. This could allow you to save money on foreign agent fees in the countries where you want to file your trademark applications.
Monitor your trademarks
Monitoring of other’s use of trademarks and trademark applications ensures that you retain the monopoly on your name or logo and that you will be able to stop your competitor in a timely manner. If you allow others to use or infringe upon your trademark this could seriously damage your business and your trademark registration.
Since anyone will be able to register a trademark without proving any use, it is expected that the amount of trademark applications will increase and this could include applications for trademarks that are similar to your own trademarks. The new law provides the possibility to notify to the Canadian Intellectual Property Office (“CIPO”) of a similar confusing application or an application that is unregistrable based on other grounds upon which CIPO could refuse to register them. Being proactive through trademark monitoring could avoid having to go through costly opposition or litigation proceedings.
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