We use cookies to give you the best online experience. By using our website you agree to our use of cookies in accordance with our cookie policy. Learn more here.Close Me
Proper usage is essential to protecting and maintaining valuable
rights in trade-marks. The general rule is 'use it or lose
it': unless a trade-mark is actually used continuously in
connection with products or services, rights will erode and
eventually be lost. Should a trade-mark be used improperly, it can
become unenforceable and therefore of no value. The primary rule is
that a trade-mark must indicate the source of goods or services and
distinguish those goods/services from others. It is important to
ensure that when the trade-mark is adopted and used, it is regarded
by the public as being a trade-mark and not as a generic usage.
The following is a brief list of the most important
considerations in using any trade-mark, whether registered or
not:
1. Trade-marks as Adjectives Only – Not Generic
Trade-marks should be used as adjectives, and
not as nouns or verbs, in order to avoid becoming generic or
descriptive terms for the relevant product or service. Examples of
proper usage (identifying the wares/ services) are as follows:
"Pass the KLEENEX tissue", or "KODAK
cameras take the best pictures." A trade-mark should not
be pluralized.
2. Emphasize the Trade-mark and Use it Consistently
Trade-marks should be highlighted in such a way that they are
easily distinguished from any accompanying text or design elements.
If the trade-mark is a word or phrase and is usually presented in a
design or stylized form, then it should always be depicted in
that form (or at least wherever practical). If there is no
accompanying design, the letters should be capitalized, or
alternatively, italic type or quotation marks should be employed in
order to distinguish the trade-mark in a body of text.
Trade-marks should be presented in a consistent, constant form.
The spelling of the trade-mark should never be changed,
nor should any extraneous punctuation be inserted unless such
punctuation is always used in connection with the trade-mark.
Trade-marks that are registered should always be used in the exact
form as registered. Small changes to a registered mark can lead to
difficulties in enforcing trademark rights down the road.
3. Give Notice to Public
Canada does not require the use of trade-mark notices, but it is
advisable to use notices as a matter of prudence. In any
advertising, Websites, promotional materials, packaging or
labelling in which a trade-mark is to be used, it must be
emphasized that the trade-mark is regarded as a trade-mark and
that it is the owner's property.
The TM symbol should be used with trade-marks which are in use
but not registered. The ® symbol should be used with
trade-marks that are registered in Canada.
The following legend (or footnote) should also be used wherever
possible, including Websites and advertising:
"BRAND-X is a trademark [or registered trade-mark, if
applicable] of ACME Industries Inc."
4. Licensing
If someone other than the owner is using the trade-mark (with
the authority of the owner), that use should be documented in a
written license agreement and a proprietary notice should be used
which indicates that there is a licence in place. The registered
owner should maintain direct or indirect control of the quality of
the wares/services.
5. Foreign Rights
The rights obtained by registering the trade-mark in Canada do
not extend outside Canada. Separate registrations must be obtained
for each country or jurisdiction, eg. the European Union, where use
of the trade-mark is proposed. In many countries, a Canadian
trade-mark registration may form the basis of the foreign
application.
6. Infringement
Infringement involves use of a trade-mark or of a confusing
trade-mark by a party other than the registered owner, or who is
not authorized by a license agreement. Steps should be taken to
protect and to enforce trade-mark rights, eg. by monitoring trade
literature carefully to identify potential infringers, and to
prevent loss of distinctiveness or the registration of confusing
trade-marks by others. 'Watch' services are available to
identify confusing trade-marks which are applied for in Canada or
elsewhere, so that opposition and other steps may be undertaken
where necessary to protect marks.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
In a cautionary tale to be heeded by patent drafters, the Supreme Court of Canada held that Pfizer’s patent directed to sildenafil, better known as Viagra, is invalid.
The recent decision in Overstock v. New York Taxation and Finance paved the way for an interesting conclusion on the taxing power of New York State - and by extension, the sales tax that may be applied to many online sales, including sales by Canadian online business into the US market.
In Pelchat v. Zone 3 Inc., 2013 QCCS 78, a Quebec court decision has addressed the dichotomy between the idea for a TV show, and the "form and expression" of ideas, as embodied in a TV show.
The Patent Prosecution Highway (PPH) program has been a phenomenal success in Canada and has positioned the country as a highly cost-effective jurisdiction in which to procure patent protection with speed and efficacy.
The advantages of trade-mark registration are self-evident for both franchisors and their franchisees who are licensees of the mark, and should be considered a mandatory first step on the road to franchising a business.
