News & Views
Trademarks - Why You Should Register Now
Written by Pauline Bosman
A trademark is more than your company or business name, it’s the main element in branding your business, products or services. It’s a source identifier used by a business to distinguish its products and services from those of others. You can buy a TIM HORTONS coffee in Vancouver and know that you are getting the same coffee you buy at a TIM HORTONS in Toronto, because of the brand or trademark. You know that the product comes from the same single source even if you don’t know who that source is.
A trademark is shorthand to customers to assure them that the products and services they purchase are what and from whom they expected. For this reason, a trademark must be distinctively unique, and why your competitors are not only prevented from using the same trademark, but even a confusingly similar trademark. A trademark is different from a business name. From a business name perspective, Simcoe House for restaurant services is different from Simcoe Mansion for restaurant services. From a trademark perspective, it is not. A friend may have told you about this great restaurant, Simcoe House, and you decide to check it out. You remember the Simcoe part, and perhaps something about a building or home. You see Simcoe Mansion and believe you got the right restaurant. Wrong - you are understandably confused. If the experience was bad and you tell your friends that the food is really terrible at the Simcoe Mansion, the reputation of the Simcoe House may suffer.
A trademark can be a word mark, a combination of letters and numbers. It can be a design or logo or even a distinguishing shape. Consider the classic COKE bottle. It can also be a sound. Think of the roaring lion by Metro-Goldwyn-Mayer Lion Corp., a registered trademark in Canada. (Check it out here http://www.cipo.ic.gc.ca/app/opic-cipo/trdmrks/srch/viewTrademark.html?id=0714314-0&lang=eng&status=OK&fileNumber=0714314&extension=0&startingDocumentIndexOnPage=1). It can be a tagline or slogan, WHERE’S THE BEEF, to use an old example. The key is whether the trademark distinguishes your products and services from those of your competitors. Under the coming amendments to the Trademarks Act, the types of possible trademarks are expanding and will include colours, holograms, moving images (eg. animated gifs), and more.
Five Good Reasons to Register Your Trademark
Trademarks do not have to be registered to act as trademarks. So why register? Here are five good reasons:
- Trademark registration gives you the sole right to use the trademark across Canada - Do you have plans to expand your business? Is your business ripe for franchising? Even if you are now currently a small business or only doing business in one province, a registered trademark can prevent a competitor, even in other provinces from using a confusingly similar mark, leaving the door open for your business to expand across the country now or in future. Note that in contrast, business name registrations are provincial in nature, and small differences between two business names are enough to allow both to be registered.
- Trademark registration acts as notice to the public of the ownership of the trademark - Beginning within days after filing, your trademark application and eventually trademark registration, is searchable within the Canadian Trademarks Database (here is the link https://www.ic.gc.ca/app/opic-cipo/trdmrks/srch/home?lang=eng). It will also show up on NUANS searches. When other businesses are considering a name for their new products or services, your trademark registration will provide notice of your use of your trademark in association with the specified products and services as listed in the registration. Properly advised competitors will be cautioned from using a similar trademark for similar products and services.
- It is easier (and cheaper) to assert your rights in your trademark - You don’t have to register a trademark to have rights in a trademark. You can sue another entity for “passing off” if that entity is using a confusingly similar trademark to your trademark. However, if your trademark is not registered you will have to prove to the court that you have rights in the mark. You will have to show that your trademark is distinctive and has become sufficiently known among consumers. Especially if your mark is relatively new, that might be difficult to do. It is also costly, often involving survey evidence. If, however, your trademark is registered, it is presumed that you have rights in the mark. Not only does this go a long way to proving the necessary elements of your claim against the infringer in court, it can often be enough to make an infringer stop using a confusingly similar mark simply on the basis of a cease and desist letter from your lawyer. In our experience, cease and desist letters based on unregistered trademarks are often ignored, the recipient being advised of the cost and difficulties of bringing an action for passing off chooses to take the risk that you won’t proceed with an action. On the other hand, responses to cease and desist letters involving a registered trademark are often heeded immediately, the rights in the trademark being clear and difficult to dispute, and the burden now being on the infringer to challenge the presumption of ownership and exclusive right to the trademark should the matter proceed to court.
- Registration of your trademark entitles you to other benefits - Are you planning to export your products or services to other countries? A registered trademark in Canada can be used as the basis for obtaining trademark protection in other countries including the United States and European Union. In addition, a registered trademark owner may request that the Canada Border Services Agency detain suspected counterfeit goods bearing the trademark coming into the country while the owner pursues legal redress in court. Finally, should another entity register a domain name which incorporates your registered trademark, the likelihood of having that domain name transferred to you, or cancelled, is higher and the burden less onerous.
- The ® symbol is eye-catching - While technically the® symbol has no legal significance in Canada; it is used by registered trademark owners to signify registration of the associated trademark. There is an air of legitimacy and sophistication to having a registered trademark. To consumers, it tends to signify a reputable and established business. It should be noted that it is not permitted to use the ® symbol next to a trademark in certain other countries, such as the United States or China, unless the trademark is registered in those countries. As stated above, registration in Canada can be the basis of registration in other countries.
Two Good Reasons to Register Now
- Save Filing Costs – Recent amendments to the Trademarks Act, including implementation of the nice classification system, are expected to take effect in early 2019. Under that international system, all goods and services are included in one of 45 classes. Currently, Canada charges only one flat filing fee per application no matter how many goods and services are listed in the application. In future, the filing fee is expected to be on a per class basis, significantly increasing filing costs, especially when the list of goods and services to be associated with the trademark is lengthy.
- Thwart Trademark Trolls - Under the current regime, while an applicant may apply for a trademark on the basis of proposed use, the trademark may not be registered until actual use of the trademark in Canada begins. The amendments to the Trademark Act will eliminate the use requirements. Trademark lawyers fear that “trademark trolls” will apply to register and secure rights in trademarks that they have no intention of using in Canada, for the purposes of selling those marks, once registered, to legitimate companies who wish to actually use those trademarks in Canada.
For further information on registering your trademarks in Canada or elsewhere, contact Pauline Bosman (905-763-3770 x 235) or Ryan Hanna (905-763-3770 x 250), lawyers and trademark agents at FIJ Law LLP.
About the Author:
Pauline Bosman is an accomplished litigator who understands that litigation success depends on managing the process as much as on judging the merits of the case. In her client-centric approach, Pauline first takes the time to identify client needs and goals. She then devises a solution that makes sense—strategically, practically and financially.
Pauline has represented clients from individuals to multinational corporations in a variety of commercial contexts. Her most notable areas of expertise are intellectual property law, construction law and contract law.
All-inclusive Pricing Provides Clarity and Consistency for Clients
Written by Olivia Nisbet
In September 2017, amendments to the Rules of Professional Conduct (the “Rules”) regarding advertising of fixed-pricing for residential real estate services were approved. The new rule reinforces the core principles that advertising must be demonstrably true, accurate and verifiable. It provides further guidance to lawyers to ensure consistency in advertising across law firms.
The rule applies to residential real estate transactions involving the sale, purchase or refinancing of property. Section 4.2-2.1 of the Rules state that a law firm (or lawyer) may advertise a price to act on a residential real estate transaction, if:
(a) The price is inclusive of all fees for legal services, disbursements, third party charges and other amounts except for harmonized sales tax (“HST”) and the following permitted disbursements: land transfer tax, government document registration fees, fees charged by the government, Teranet fees, the cost of condominium status certificate, payment for letters from creditors’ lawyers regarding similar name executions and any title insurance premium;
(b) The advertisement states that the HST and the permitted disbursements are not included in the price;
(c) The lawyer strictly adheres to the price for every transaction;
(d) In the case of a purchase transaction, the price includes acting on both the purchase and the mortgage; and
(e) In the case of a sale transaction, the price includes acting on both the sale and discharge of a first mortgage.
The new rule provides for greater certainty for clients in that the all-inclusive price is required to include overhead costs, courier costs, bank fees, postage costs, photocopy costs, third party conveyancer’s title, other searches and fees, and any other disbursements that are not permitted disbursements specifically mentioned in the subrule. This avoids the spectre of unexpected costs being incurred at closing.
A further benefit to clients lies in the transparency of the all-inclusive pricing, creating clarity for clients and allowing for easier comparisons of services across multiple law firms.
*The material provided in this article is for general information purposes only. It is not intended to provide legal advice or opinions of any kind.
About the Author:
Olivia Nisbet is the 2017-2018 articling student at FIJ Law. She first joined the firm as a summer student in 2016. Olivia is part of the Corporate and Commercial Group at FIJ and will be returning as an Associate after her call to the bar.
If you would like additional information, please feel free to contact Olivia Nisbet at firstname.lastname@example.org or at 905 763 3770 x 241