Trademarks are an excellent way to protect your brand. Unlike patents or copyrights which protect specific products or works, a trademark distinguishes your company from others. It protects the goodwill and reputation of your business. The important thing to remember with trademarks is that they must always function to identify your company as the source of the goods or services. Your company name, the names of your products etc. do not protect the goods themselves, but rather they protect your brand. For example, the word LEGO and the LEGO logo function as trademarks because they identify the brand. However, the LEGO bricks themselves are not trademarked.

Trademarks come in a variety of forms. For instance, you may want to register the distinctive part of your company name (i.e. Apple is the trademark not Apple Inc.), a tag line or a logo. While these are the most common and obvious types of trademarks, you can also register colours, shapes, holograms, moving images, modes of packaging, sounds, scents and tastes. For example, the distinctive smell of is a registered scent mark, described as “a unique scent of pungent, aldehydic fragrance combined with the faint scent of hydrocarbon wax and an earthy clay”.

Unregistered vs Registered Trademarks

To some extent trademarks can be protected without registration. This is known as common law protection, which offers a limited scope of protection compared to a registered mark.

An unregistered trademark can be identified using the symbol. This is optional but it puts the public on notice that you are intending that word, phrase, or design to function as a trademark. However, if you were to attempt to bring a competitor to court over their unauthorized use of your unregistered trademark, you may be in for a lengthy and expensive battle. Unregistered trademarks are protected only in the limited geographic region that they are used. This means that if your company only operates in Toronto and the mark is only known in Toronto, you likely won’t be able to enforce your trademark against a competitor in Vancouver. This is because your goodwill may be limited to Toronto, so consumers in Vancouver are unlikely to mistake the competitor’s product for yours.

If a competitor is using your mark (or a confusingly similar mark), you cannot sue for trademark infringement. Rather, under common law this is known as “passing off”. This can be a difficult thing to prove, since you need to demonstrate that the trademark is associated with the reputation of your business, that the public was confused by the marks and that you suffered damage as a result. This often requires you to undertake surveys and to provide financial evidence of lost profits in order to support your claim.

In contrast, a registered trademark is much easier to enforce (albeit all litigation is costly). A registered mark can be identified using the ® symbol, but again this is not legally necessary. The rights of a registered trademark are national, meaning even if you only operate in Toronto, you would be able to prevent someone else (for the same class of goods or services) from using the same mark in Vancouver. This would also give you the ability to stop someone using a confusing similar mark in the same line of business or in a confusingly similar business.

Although a registered trademark is easier to enforce, unregistered trademarks can still be beneficial, especially in the early stages of a company where money may be tight. They allow you to build your brand and establish your distinctiveness in the marketplace, which is sometimes necessary to the success of your trademark application. Since Canada (as well as the US) is a first-to-use system, as soon as you start using your trademark (even if unregistered) you begin to acquire rights. This means if someone else wants to register your trademark you can oppose them on the basis that you were using it first. Using an unregistered trademark can also help build the distinctiveness of the mark, which can be beneficial for certain types of descriptive marks, which will be discussed below. That said, if you have a distinctive mark and the means to protect it, registration is the strongest form of protection.

What can be a Trademark?

Not everything is eligible for trademark protection. A trademark needs to identify your company as the source and also has to be distinctive. This means it needs to identify your company and �DzԱ�����your company. It cannot be a word that identifies the broad class of goods or services in which you operate, as that would not identify your company specifically. There is a spectrum of distinctiveness when it comes to the registrability of trademarks:

A generic mark is not eligible for trademark protection. This means that this name has become the name the public uses broadly to identify the goods or services and no longer identifies the brand. For example, escalator used to be a trademark, but is now generically used to identify all types of moving staircases. Often, genericization is something that happens to existing marks, and is not often an issue for registration of new marks.

Descriptive marks are also not considered registrable. A descriptive mark is something that describes the quality, character or function of the goods or services. For example, American Airlines is a descriptive mark. It does in fact describe an American-branded airline company.

However, all hope is not lost for descriptive marks, and this is where the use of an unregistered trademark can save the day. A descriptive mark can become registrable if it comes to identify your company as the source, meaning it acquires distinctiveness through use over time. American Airlines was able to register its name as a trademark as the name became distinctive through use and consumers associated it with the company.

A suggestive mark sits right in the middle of the trademark registrability scale. These types of marks are generally registrable as they only hint at the type of goods or services rather than describing them outright. For example, Airbnb is a suggestive trademark. It doesn’t outright describe an online vacation rental business, but the inclusion of “bnb” alludes to a bed and breakfast. However, the complete trademark “Airbnb” does not directly describe vacation rentals, or bed and breakfasts for that matter. As such, it is a step above a merely descriptive mark and is thus considered registrable.

Arbitrary marks are the next strongest on the trademark registrability scale. These types of marks use common, but unrelated, words to describe their business. For example, “Apple” for computers, “Dove” for soap, or “Blackberry” for smartphones. All these marks rely on words that already existed in the English language. However, these words have nothing to do with the goods or services of the company. There is no natural association made between the word and the product. The association arises because the mark is distinctive of the source due to the efforts of the company. For instance, it is only due to Apple’s strong branding that consumers associate the word apple with computers.

Finally, fanciful marks are the strongest type of trademark. These are entirely made-up words that a company uses to identify itself. Lululemon is an excellent example of a successful brand using a fanciful mark. Lululemon has no other meaning, other than the association with exercise wear. These marks are the easiest to register (so long as they are not confusingly similar with an already registered or well-known mark) and afforded the highest level of protection. Since the word has no other meaning, there is no reason that anyone else should have a need to use the mark. The word is completely distinctive of your company.

Registering your trademark

Use is essential to maintaining a trademark. In Canada and the United States, you can apply to register a trademark before you have used it. In Canada, the catch is you must begin using your trademark within 3 years, or your mark risks being removed from the register. As such, if you haven’t started using your mark but you plan to, it can be a good idea to file to establish your date, and then begin use later.

The process is slightly different in the United States. The first difference is that there is state and federal trademark protection. You can register your mark in individual states, but this protection applies only to those individual states. Federal registration provides nation-wide protection of your trademark. Second, the US has a different use requirement for filing - you must have “use in commerce” or “intent to use”. Use in commerce means actual use across state lines (to qualify for federal protection). Intent to use allows you to apply for protection either before you’ve started to use your mark, or if you’ve only used it in one state. However, you’ll need to be able to demonstrate use at the time the office is ready to register your mark.

Similar to the PCT for patents, you can file an international trademark application, though there is no such thing as an international trademark. You can use the Madrid Protocol to file a single application which can then be used as a basis to file in multiple member countries (this includes Canada and the US). However, unlike with the PCT system for patents, you need to file an initial trademark application in your home country before you can take advantage of the Madrid Protocol to file in other countries of interest.

Once your mark is registered, so long as it continues to be distinctive of your company and you continue to use it and pay the renewal fees, you can keep your trademark indefinitely.

Protecting your trademark

Although a trademark can be renewed multiple times, if you fail to use and monitor your mark you risk losing it. You need to make sure your trademark remains distinctive of your company. To do so it is up to you to monitor and enforce your mark. If competitors begin to use your trademark or a similarly confusing mark this can dilute your trademark. Dilution is never good news for trademarks because it can harm your brand. For example, if another company uses your trademark on knock-off products, or to market their own goods, this can confuse consumers. If you allow the confusion to go on for a long time it can be very difficult to later enforce your trademark in the courtroom. A mark that is no longer distinctive can be at risk of being expunged from the register.

As such, it is good practice to routinely monitor your trademark. You can do a simple Google search to see what comes up for your trademark. Also consider common misspellings of your trademark for potential confusing marks. Alternatively, a trademark agent or lawyer can set up regular searches and notify you of any potential trademark infringement and advise you on how to proceed.

The post Use It or Lose It: How to Acquire and Protect your Trademarks appeared first on IPOsgoode.

Photo by Engin Akyurt ()

Prof. Pina D’Agostino is the Founder and Director of IP Osgoode, the IP Intensive Program, and the IP Innovation Clinic, the Founder and Editor-in-Chief of the IPilogue, the Deputy Editor of the Intellectual Property Journal, and an Associate Professor at Osgoode Hall Law School. This article features contributions from Ryan Wong (IP Osgoode & IP Innovation Clinic Alumnus), Sabrina Macklai (IPilogue Senior Editor), Tianchu Gao (IPilogue Writer), and Ashley Moniz (IPilogue Managing Editor).

2021 was an exciting year for the IPilogue. Our hard-working students and community members published more than twice as many articles than in 2020 and the most articles in a calendar year since 2011. This sharp increase helped us stay up to date with some of the biggest topics shaking up intellectual property: from , to ; and from growing investments in and , to IP registrars around the world grappling with whether to acknowledge  as an inventor or artist. This article summarizes the top developments reported on our blog and in patents, trademarks, and copyright law in 2021. For a review of Privacy legislation in Canada, check out .

Top 10 Most Read IPilogue Articles Published in 2021

1. by Sabrina Macklai & Emily Chow
2. by Prof. David Vaver
3. by Claire Wortsman
4. By Claire Wortsman
5. by Natalie Bravo
6. by Prof. Giuseppina D’Agostino
7. by Bonnie Hassanzadeh
8. By Meena Alnajar
9. by Prof. David Vaver
10. by Bonnie Hassanzadeh

Introducing the College of Patent Agents & Trademark Agents

On , the came into force. The Act established the (‘’), an independent public interest regulator of patent and trademark agents in Canada. The purpose of the College is “to enhance the public’s ability to secure the rights provided under the and the .” The College’s responsibilities include maintaining professional competencies and ethics, issuing licences, collecting fees, and administering certification exams. This development marks a key milestone for the profession and for Canada’s . Though still in its infancy, the College has been criticized for and its , which may impose an additional fee on lawyer agents. It remains to be seen how influential the College is on the profession as it is expected to be fully operational within the next two years.

Patents

Overbreadth as an Independent Ground of Invalidity

On July 28, 2021, the Federal Court of Appeal confirmed overbreadth as a standalone attack on patent validity: . In this case, the appellants argued that there is no statutory basis for overbreadth as a ground for invalidity. The Federal Court of Appeal disagreed and found that overbreadth can be supported by a combination of sections 27(3) and 27(4) of the Patent Act. Case law has often overlapped overbreadth with other grounds of invalidity such as obviousness, anticipation, and inutility.��

First Time Interpreting Patent Agent Privilege

Similar to solicitor-client privilege, patent agent privilege was introduced by section 16.1 of the Patent Act on June 24, 2016. The first case on patent agent privilege was decided this year: In this decision, the Federal Court provided some helpful commentary and analysis on the application and limitations of patent agent privilege.��

Patent Prosecution History Now Admissible as Evidence

In 2018, section 53.1 of the Patent Act was added to make patent prosecution history admissible as evidence in patent proceedings. This was a significant development as the Supreme Court of Canada had expressly rejected the idea and stated that admitting patent prosecution history “would undermine the public notice function of the claims, and increase uncertainty as well as fuelling the already overheated engines of patent litigation” (Free World Trust v Électro Santé Inc., 2000 SCC 66 at para. 66). Three subsequent Federal Court of Appeal decisions developed this provision further: ; ; and .��

Continued Debates over AI as an Inventor

Around the world, patent registrars grappled with patent applications that credit artificial intelligence software as the inventor. Dr. Stephen Thaler’s “DABUS” (Device for Autonomous Bootstrapping of Unified Sentience) applied for patents around the world for its interlocking food containers. DABUS was granted patents in Australia and South Africa, with . In line with the and the , the disagreed, stating that absent express intention from Congress, the term “individual” in their statutory definition of “inventor” . The Supreme Court of Canada last considered the definition of "inventor" in 2002, but has yet to consider whether it would include non-human entities.

Trademark Law

Parody in Trademarks is No Joke

In , the Federal Court reaffirmed that parody is not a defence against trademark violation. Unlike the 2020 decision ), where the Federal Court failed to find the marks confusing, Justice McHaffie held there was a likelihood of confusion and passing off. This was based partly on the similarity of the trademarks and the overlap of the goods (both offering baked goods). However, even if the nature of the parties’ trades differ, trademark owners may still find recourse against spoofed versions of their marks through claiming depreciation of goodwill under section 22 of the . Here, the Court found goodwill in Subway’s trademarks, which was damaged by the nature of Budway’s products, as contrary to Subway’s “healthy and active” lifestyle promotion. With damages amounting to $40,000, it is clear the courts are unamused by parody in trademarks.

The Road Less Travelled Cannot be Trademarked

Like most countries, Canada bars the registration of “clearly descriptive” trademarks to prevent applicants from monopolizing words that merely describe the goods or services at hand. For this reason, marks consisting of are typically unregistrable. In , the Federal Court clarified when such marks might be protected. Hidden Bench and Locust Lane are two wineries operating on the same little road, “Locust Lane”. Although the Federal Court agreed that Hidden Bench met the threshold for a valid common law trademark over “Locust Lane”, they ultimately held that the mark, as clearly describing the goods and services’ place of origin, lacked both inherent and acquired distinctiveness. Therefore, Hidden Bench could not establish the necessary goodwill for a passing off claim. Only descriptive marks that have acquired a “secondary meaning” through use may warrant protection.

CIPO Addresses the Application Backlog

While filing trademarks is important for brand protection, the examination stage can take . In May, the Canadian Intellectual Property Office (CIPO) new measures to address the application backlog. Trademark owners may now file requests to expedite their examination where the registration of their mark is necessary for special circumstances such as if a Canadian court action involving the mark is expected or underway or if the goods or services are aimed at preventing, diagnosing, treating, or curing COVID-19. If accepted, the examination will take place within two weeks. The examination is also automatically expedited by approximately 6-10 months when the goods and services in the application are listed in CIPO’s . Though it is too early to assess the effect of these changes on mitigating the “”, the backlog of CIPO’s unexamined trademark applications appears to have as of December 13, 2021.

Push to Register Non-French Trademarks for Use in Quebec

Among the controversies associated with Quebec’s proposed Bill 96, , the bill stipulates new requirements for trademark owners operating in Quebec. Currently, under Quebec’s French-language laws, both registered and unregistered (i.e., common law) trademarks recognized under the may appear on public signs, posters, and commercial advertising in Quebec, in languages exclusively other than French. If enacted, Bill 96 would permit only registered non-French trademarks to appear on public signage, provided there is no corresponding registered French version of the mark. The Coalition Avenir Quebec government tabled Bill 96 on May 13, 2021, and Quebec’s National Assembly last examined it on December 10. Some iteration of the bill will likely become law by the end of this year. But even if it fails to pass, businesses relying on common law trademarks would be wise to try to register them, given the many that registration provides.��

Copyright Law

In 2021, the Federal Court and Federal Court of Appeal heard 57 copyright infringement proceedings, approximately of all IP-related litigations at these levels.

Developments in Fair Dealing

The Copyright Act’s section 29 fair dealing provision, which allows for certain uses of copyright-protected materials, remained a central issue. affirmed that fair dealing for the purpose of news reporting (section 29.2 of the Act) must provide attribution, mentioning both the source and the name of the author. An indirect reference to the author accessible through “minimum research” is insufficient. As such, the Federal Court of Appeal rejected Trend Hunter’s argument that hyperlinking to the source article where Stross was credited was sufficient to meet the second requirement. The Court also declined to find fair dealing under s. 29 more broadly, considering that Trend Hunter’s dealing was commercial in nature, reproduced Stross’ work in its entirety, and that alternatives were available.

Fair dealing was once again at issue in , where the Federal Court held that the Conservative Party’s use of the CBC’s news footage of Liberal Party Leader and Prime Minister Justin Trudeau during their 2019 election campaign did not infringe CBC’s copyright. The court undertook a large and liberal interpretation of fair dealing, finding that the Conservative Party’s use of CBC footage was for the purpose of criticism under s. 29.1.

91��ɫ achieved a in the copyright tariff dispute with the Canadian Copyright Licensing Agency (“Access Copyright”) in In a unanimous decision, the Supreme Court ruled that the interim tariff approved by the Copyright Board is not mandatory. Users can choose whether to accept licences or pursue alternative methods to lawfully copy works. Notably, this marked Justice Rosalie Abella’s final decision before her retirement from the Supreme Court of Canada. Throughout her tenure, and her judgement here provided helpful obiter regarding fair dealing as integral to users’ rights.

Even Fake Facts are Not Copyrightable

involves the alleged copyright infringement of the famous true-crime story The Black Donnellys. The book had always been presented and accepted as “.” The Federal Court ruled that “an author who publishes what is said to be a nonfiction historical account cannot later claim the account is actually fictional to avoid the principle that there is no copyright in facts.” Given today’s popularity of the phrase “based on a true story”, this ruling is a that there is no copyright in facts, even if they are later found to be untrue.

Copyright in Evolving Content Transmission

In , the Federal Court found the defendant liable for copyright infringement in its provision of pre-loaded set-top boxes and internet protocol television (IPTV) services and awarded the plaintiff nearly $30 million in damages. These services made copyrighted works owned by the plaintiff available to the public without the plaintiff’s permission. This decision marks the first time The court dealt with a similar issue in ). As IPTV is growing increasingly popular across the globe, its poses a challenge in Canada.

Availability of Reverse Class Actions for Copyright Infringement Claims

The first of its kind in Canada, the Federal Court of Appeal in affirmed that reverse class actions may be pursued in connection with copyright infringement claims. Though the matter was sent back to the Federal Court for further consideration, this judgement may encourage and enable mass copyright enforcement in the future, especially in our digital age where copyright infringement is more commonplace.

Public Consultations Ahead of 2022’s Copyright Reform

As part of the (CUSMA), which came into force on July 1, 2020, Canada has until the end of 2022 to implement numerous changes to their domestic copyright laws; most notably, extending the general term of copyright protection from . In light of the upcoming legislative amendments, the Government of Canada hosted three public copyright consultations in 2021:

• ;
• ; and

With the consultations now closed, it will be interesting to see how Canadian copyright laws will change in 2022 to accord not only with international obligations but our ever evolving digital world and public attitudes surrounding copyright laws.

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