Bright Idea–Great Brand: Trade-Marks Jonathan C. Cohen Shapiro Cohen Intellectual Property Law

1. Bright Idea–Great Brand: Trade-Marks Jonathan C. Cohen Shapiro Cohen Intellectual Property Law

2. Bright Idea–Great Brand: Trade-Marks • Choosing a trade-mark • Register or Not? • Protecting your trade-mark • Policing your trade-mark • Domain Names, your trade-mark and you

3. Bright Idea–Great Brand: Trade-Marks • 1. Choosing a trade-mark • Considerations: • Methodology • Importance of Searching • High degree of inherent distinctiveness

4. Bright Idea–Great Brand: Trade-Marks • 1. Choosing a trade-mark • Considerations: • Methodology • Internal • External

5. Bright Idea–Great Brand: Trade-Marks • 1. Choosing a trade-mark • Considerations: • Importance of Searching: types of searching • Canada-wide search, and/or searching outside of Canada? • Federal TM Registries • Internet • Search Houses • Common Law

6. Bright Idea–Great Brand: Trade-Marks • 1. Choosing a trade-mark • Considerations: • Importance of Searching: purpose of searching • Analysis by a TM professional helps determine: • What other TMs exists on TM registries? • Clearly descriptive? Deceptively misdescriptive? • Primarily a surname? • The name of good/services in another language? • A geographical indication? A recognized standard? • An official mark?

7. Bright Idea–Great Brand: Trade-Marks • 1. Choosing a trade-mark • Considerations: • High degree of inherent distinctiveness • The TM does not have meaning in relation to the product / service • Most successful TMs have been coined terms: • When choosing a TM choose something distinctive!

8. Bright Idea–Great Brand: Trade-Marks • Register or Not? • Registration has its advantages: • Registrant deemed to have the exclusive right to use the TM all over Canada • Registrant can sue for statutory infringement • Registrant has right to sue for the depreciation of the value of goodwill

9. Bright Idea–Great Brand: Trade-Marks • 2. Register or Not? • Rights without Registration: • The common law tort of passing off has been codified in the Trade-marks Act, Section 7 • Common law rights typically geographically limited • No right to sue outside your area of reputation

10. Bright Idea–Great Brand: Trade-Marks • 3. Protecting your trade-mark • Opposition proceedings • Litigation

11. Bright Idea–Great Brand: Trade-Marks • 3. Protecting your trade-mark • Opposition proceedings • Semi-litigious proceedings before the Registrar of Trade-marks (Opposition Board) • Any one may oppose an advertised trade-mark on the following grounds • Application does not meet formality requirements • Trade-mark is not registrable • Applicant is not entitled to register • Trade-mark lacks distinctiveness

12. Bright Idea–Great Brand: Trade-Marks • 3. Protecting your trade-mark • Litigation • Can take place in either Federal Court or Provincial Court • May start litigation while opposition ongoing • Litigation used to sue for infringement, depreciation of the value of goodwill, passing off • Matters with ancillary contract issues may be heard by Federal Court

13. Bright Idea–Great Brand: Trade-Marks • 3. Protecting your trade-mark • Litigation—how to recognize infringement: • Determination whether a TM is confusing: • Are wares/services identical? In area of natural expansion? • Are the wares/services similar channels of trade? • Similar in appearance / sound / idea conveyed? • Dates of first use? Length of use? • Scope of reputation? • Licensing? Advertising?

14. Bright Idea–Great Brand: Trade-Marks • 3. Protecting your trade-mark • Litigation—Trade-mark Notices • No legal requirement in Canada to use TM or ® • But it is recommended! • Identification of licensed use of a mark is key • Always make your trade-mark stand out from its surroundings: flashing; different colours; asterisk pointing reader to notice re ownership (website)

15. Bright Idea–Great Brand: Trade-Marks • Policing your trade-mark • Trade-mark as a house plant • Keep using it • Use it as registered • License and assign properly • Always record change in ownership • Preserve “distinctiveness”—use as a TM

16. Bright Idea–Great Brand: Trade-Marks • Policing your trade-mark • Trade-mark as a house plant • Have a review process: • Of internal use of the trade-mark, and • Others in the marketplace

17. Bright Idea–Great Brand: Trade-Marks • 5. Domain Names, your trade-mark and you • Trade-mark / Domain Name Strategy • Question is not whether you need a strategy, but what kind do you need • Domain names are interesting creatures—are they TMs? Are they even “property”? • Strategy could be simple or very complicated

18. Bright Idea–Great Brand: Trade-Marks • 5. Domain Names, your trade-mark and you • Trade-mark / Domain Name Strategy • Need to understand whole picture to be effective: • TM law expertise • DN (UDRP and case law) knowledge • Understand the gTLD and ccTLD worlds • Understand the rules that govern ICANN • Becoming a true “Sub speciality” • Know who the experts really are

19. Bright Idea–Great Brand: Trade-Marks THANK YOU FOR YOUR ATTENTION QUESTIONS?