The starting point of an effective trademark protection strategy is laying a solid foundation upon which you will plan the strategy and then implement it. That foundation involves understanding the concepts and frameworks of trademark law so that you can appreciate the why's and how's of protecting your brand instead of mechanically going through the steps.
The following topics are intended to provide you with general information about trademarks and shed some light on the way trademark law operates in Canada. These topics should not be relied upon as legal advice. General legal information operates in a vacuum. Legal advice is always situation-specific. In order for lawyers give you legal advice, they need to know the facts of your particular situation before they can apply their knowledge of the law to your situation. Understanding your trademark rights is a starting point, but to protect your trademark rights properly, you should consult a qualified trademark lawyer or agent.
The Canadian Intellectual Property Office and the World Intellectual Property Office define intellectual property as “creations of the mind,” giving the examples of artistic and literary works, inventions, designs, brands and logos. In legal terms, intellectual property rights are viewed as intangible assets or property in that we are able to claim exclusive and transferable rights to the products of our intellectual effort and prevent others from using them in an improper manner.
The main categories of intellectual property are trademarks, copyright, patents, industrial designs, integrated circuit topographies, and trade secrets/confidential information. Trademarks are words, numbers, symbols, or designs used to identify the source of a product or service and to distinguish it from the products or services of other sources. A copyright is the exclusive right to produce, reproduce, sell or perform a literary, dramatic, artistic or musical work. A patent is a government granted monopoly to manufacture, use, and sell an invention. Industrial designs encompass the non-functional features of the shape, configuration, pattern or ornamentation of industrially produced objects. An integrated circuit topography is the three-dimensional shape of the interior of an integrated circuit (chip or microchip). Trade secrets are the confidential information and know-how, such as formulas, recipes, and business models, used by an entity in the creation of its products or in the operation of its business.
Each of the IP categories is distinct from the others and is intended to provide a specific form of protection. However, a single product can become the subject of several forms of intellectual property protection, each protecting a different aspect of the product, for example, it’s design, production or marketing.
There is also an overlap in the legal routes through which a single form of intellectual property protection can be put into effect. Federal statute law (which governs the registration process for a form of intellectual property) protects trademarks, copyrights, patents, industrial designs, integrated circuit topographies, and new plant varieties. Alternative to or in conjunction with registration, trademarks and copyrights may be protected by common law, which is law that has evolved from court cases and is as binding as statutes. Trade secrets and confidential information may be protected by private contracts and agreements as well as common law.
A trademark is a word, symbol, number or design — or a combination of these elements — used to identify a source of a product or service and distinguish that product or service from others in the marketplace. Used well, a trademark may also associate the product or service with a reputation or goodwill, indicating quality, customer service or other desirable attributes.
Trademarks are most commonly known as brand names and logos. Popular examples of trademarks are the Nike swoosh, the Apple logo, and the Coca-cola brand name. Other types of trademarks that may not immediately come to mind as being trademarks are numbers, sounds and patterns, such as the Pizza Pizza phone number and the Burberry fabric pattern. Even a slogan, such as Tim Horton's “Roll Up the Rim to Win,” can qualify as a trademark. What qualifies the above examples as "trademarks" is that they are all perform the function of a trademark, which is to enable consumers to distinguish the company's product or service from the products or services of its competitors.
A legally strong trademark is a trademark that is given a wide scope of protection by the Trade-marks Office and the courts. When the Trade-marks Office, or a court, is determining whether a competing trademark is confusingly similar to your trademark, one of the factors it will consider is the strength of your trademark. The stronger — or in legal terms, the more “inherently distinctive” — your trademark is, the greater the differences need to be for the competing trademark not to be viewed as confusingly similar to your trademark.
The key elements of an inherently distinctive trademark are words that are: 1) invented, 2) non-descriptive, and 3) unique. Invented or coined words tend to be the best option for distinctive trademarks; they will, at the same time, be non-descriptive and unique. A well-known example of a strong trademark consisting of an invented word is EXXON. Other good choices for trademarks are dictionary words that are completely unrelated to your product or service and are unique to the industry or field. A well-known example of a trademark consisting of a dictionary word that is both non-descriptive and unique is APPLE, as it is neither descriptive of the products the company sells nor a term commonly used in the computer industry. By selecting a trademark that possesses one or more of the characteristics of inventiveness, non-descriptiveness, and uniqueness, not only are you increasing the sphere of protection for your trademark, you are also decreasing the likelihood that your trademark infringes other trademarks already in the marketplace.
In Canada, there are four general categories of trademarks that can be registered. The most common category is ordinary trademarks, which are used to distinguish a person's product or service from those of others. Sometimes included in this category and other times separated into another are proposed trademarks, which are trademarks that have not yet been used in the marketplace. Although proposed trademarks are not protected by common law, you are permitted to apply for the registration of a proposed trademark. However, the Trade-marks Office will not actually register the trademark until it has been used. Certification marks are quality indicators that identify a product or service as meeting a defined standard established by a governing organization in the industry. Distinguishing guises protect either the shaping of products or their containers or the modes of wrapping or packaging products. In order for the shape of a product to be protected as a distinguishing guise, it must serve the basic function of a trademark, which is to distinguish that product from competitors' products. An example of a distinguishing guise that fulfills this function is the shape of the Coca-Cola bottle. Whereas trademarks and certification marks are two-dimensional marks, distinguishing guises are three-dimensional.
