What comes to mind when you hear the name President’s Choice? Premium quality? Trustworthy? Convenience? Depending on your experience with the brand, the name immediately conjures up an impression of what the brand represents. That’s the power of a brand.
You can spend considerable time and money developing your brand. But what are you doing to safeguard the name? That’s when a lawyer becomes your ally, to protect your intellectual property (IP) through trademark registration.
Trademarks – be they names, taglines or graphic images – help consumers identify a brand, coupled with its reputation. The Canadian Intellectual Property Office (CIPO) explains “a trademark can protect a combination of words, sounds or designs used to distinguish your goods or services from those of others in the marketplace.”
Using a trademark that may be confused with someone else’s is trademark infringement, and can expose you to legal action and a long and expensive court case. If you are found to be in the wrong or concede, the trademark must be removed from packaging and marketing collateral. The resultant name change may also necessitate rebranding. All this comes at considerable expense.
When a trademark is registered in Canada, the owner has the legal right for exclusive use of the mark, in association with certain goods or services, for fifteen years. Thereafter, it can be renewed every fifteen years.
A comprehensive business plan is a valuable guide for decision-making about names and taglines in which to invest as your business evolves over the long term.
Before choosing a brand/product name or tagline, it’s wise to do a search of existing trademarks through the Canadian Trademarks Database. Also search for different variations. Then comb the internet for all variations used for similar goods in Canada. According to common law, another party may have the right of first use, or own the mark, if they have used it for a certain time period.
Hire a registered trademark agent, typically a lawyer, to conduct a common law search for similar marks and provide a legal opinion as to whether your mark is “trademarkable”. Words or designs that are “confusingly similar” will be difficult to trademark. The Trade-marks Act stipulates the type of words that cannot be registered.
A separate application must be submitted for every trademark, along with filing and registration fees. Thorough knowledge of trademark law, terminology and the complex application process is required. Consulting an expert for advice can save time and money by increasing the prospect of a successful application. A properly written application can protect a trademark in the event of a challenge.
The trademark registration process can span two to three years, depending on whether there is opposition from another party.
Once a trademark is registered, continued use is required to maintain it. Although trademark registration appears to be like a protective force field, it’s the owner’s responsibility to shield the trademark from copycats by policing it attentively. Challenge anyone who steps on your turf and infringes on your trademark.
One final thing, protecting the trademark goes hand in hand with protecting the reputation of your brand.
As a packaged foods specialist, Birgit Blain transforms food into retail-ready products. Her experience includes 17 years with Loblaw Brands and President’s Choice®. Contact her at [email protected] or learn more at www.BBandAssoc.com
© Birgit Blain
This article appeared in Food in Canada magazine.
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