The content of these FAQs, just as the rest of the content found on this website, is NOT legal advice. Legal advice is when a lawyer applies specific law or general principles of law recognized in a determined jurisdiction, to a particular factual situation for a particular client. Our content simply seeks to help readers avoid common mistakes and hopefully help them have a general understanding of the subjects here stated.
General
The purpose of a trademark is to indicate the origin of goods or services. Historically, trademarks have been used by merchants and manufacturers as a symbol to communicate to the community where a product came from and who made it. Today, that is still largely what trademarks do, though typically we think of them more in terms of modern concepts like branding, but it’s still true that anything which marks your good or products as being distinct from those of competitors in the market qualifies as a trademark.
- Words and names
- Phrases and slogans
- Symbols or logos
- Distinctive shapes
- Uniquely stylized representations of a word
- Characters, cartoons, etc.
- Characteristic building designs
- “Trade Dress”, ie. characteristic packaging details
In addition to these common types of trademarks, the following are things which can be trademarked in rare occasion:
- Sounds, sequences of notes, spoken phrases
- Pieces of music
- Specific colors in certain applications
- Smells
- Light displays
You cannot register a name or a surname, clearly descriptive or deceptively misdescriptive words or marks, marks that refer to the geographic origin of your product or service, marks that are confusingly similar with those that have already been registered or are in the process of registration, and marks which are the name of the goods and/or services that the mark is being used with.
The Trade-marks Act also sets out a list of what are known as “prohibited marks”. These marks include “any badge, crest, emblem or mark” that has been adopted and used by any public authority in Canada as an official mark, and which have been identified as such by the Registrar of Trademarks. It is important to work with a qualified trademark agent to ensure that you are not filing a trademark application for something which will not be registrable.
- Constructive Notice: registration of trademark constitutes ‘constructive notice’, meaning that anyone who attempts to use the mark after the date of registration will be unable to claim that they did so in ignorance of your trademark claim. Without federal registration, it can be difficult to prevent someone in another state from using your trademark.
- Registration allows you to use the ® mark as a form of notice.
- You may sue infringers in Federal Court.
- Statutory damages can be pursued for trademark infringement.
- Trademark registration can be used in disputes over domain names. If you have a registered trademark and your opponent does not, your claim will take precedent.
- Trademarks can be declared “incontestable” after 5 years of trademark registration. This would prevent anyone else from preventing you from continuing to use the trademark, even if they can establish that their use of it precedes yours.
- US Customs and Border Services can intercept importation of infringing goods.
A federally registered trademark is valid for a period of 10 years. They may be renewed by the end of that 10 year period any number of times, however, meaning that theoretically there is no upper limit on the extent of a trademark registration.
Law
A common law trademark is another name for an unregistered trademark. The term “common law trademark” is often used in Canada and the United States.
The Madrid Protocol is a project of the World Intellectual Property Organization (WIPO) established in 1996, which the U.S signed onto in 2002. The Madrid Protocol allows a trademark owner to protect a mark in several countries with just a single application, based on the application to register the trademark in the owner’s country. The application is filed in one office in one language and saves the owner the burden of separate filings in several countries. The application fees depend on which countries you wish to file in and are charged in Swiss Franks.
Before registering a trademark one must first define the goods and/or services the trademark is going to be used for. With every trademark application, a clear description of goods and/or services must be provided.
Different goods or services are grouped into different classes, therefore, depending on what goods or services one is applying for, registration should be sought in one or more classes.
The Nice classification (NCL) is the standard classification system that is used by the overwhelming majority of countries around the world. The classification, established by the Nice Agreement (1957), establishes 45 classes. Classes 1 through 34 are for goods and classes 35 through 45 are for services.
Goods are tangible. They consist of products that one may purchase to use or consume. Depending on the nature of the good or product, it may be consumed upon its first use (e.g. chocolate bar, banana, soda water) or may be used on more than one occasion, where the product does not lose its original characteristics (e.g. pen, shoes, motorcycle).
Services are intangible. They are actions provided by a third party that may require a special skill or resource. When paying for a service, one does not own the service, only the result of the action provided by the service provider (e.g. haircut, painted wall) or the right to the provision of the service (legal advice from an attorney, a room in a hotel, telephone line provided by a telephone company).
The International Trademark Association (INTA) is a global not-for-profit advocacy association of brand owners and professionals dedicated to supporting trademarks and related intellectual property to foster consumer trust, economic growth, and innovation. INTA’s members are more than 7,200 organizations from 187 countries.
Domain Name
You may be able to register your domain name as a trademark, but your domain name will be subject to the same rules and standards as other types of trademarks, so must function as a source indicator of the owner’s products or services in order to qualify for federal trademark protection.
A domain name is a portion of a website address on the Internet. It allows a user to visit a specific webpage. A trademark is not a website address on the Internet; it is a symbol, image, design, word, or combination of words and designs that identify the source of your goods and services. You are not required to use your trademark in your domain name, but many businesses choose to do so, and it is often desirable to do so from a branding perspective.
When domain names are used as trademarks, there is a potential for confusion with similar marks. Even in the absence of trademark infringement, a registration that was made in bad faith may expose the domain owner to legal liability or potential loss of the domain. Any such disputes should be approached carefully, preferably with the advice of counsel. We represent a wide range of companies and individuals with respect to domain name disputes and transactions.
No, You Can’t Register a Famous Trademark as a Domain Name Just Because “It Was Available”
Choosing a Trademark
What may be considered as a prohibited sign vary between jurisdictions.
There are a number of International Treaties that mention protected emblems and symbols that may not be included in a trademark, obligating the local trademark office in countries that are a party to such treaties to refuse trademark applications that include them. Furthermore, in certain cases where a trademark may have been registered including a protected symbol, the trademark may be invalidated.
The Paris Convention for the Protection of Industrial Property first signed in March 20 1883, along with its numerous revisions, states the following elements as prohibited signs:
– Armorial Bearings
– Flags
– State Emblems
– Official Signs
– Hallmarks
– Abbreviations and Names of International Intergovernmental Organizations
The Nairobi Treaty on the Protection of the Olympic Symbol adopted on September 26, 1981, states the following elements as prohibited signs:
– Olympic symbol. The treaty defines the Olympic symbol as that consisting of five interlaced rings: blue, yellow, black, green and red, arranged in that order from left to right. It consists of the Olympic rings alone, whether delineated in a single color or in different colors.
Protocol III of the Geneva Convention of August 12, 1949, relating to the Adoption of an Additional Distinctive Emblem, of December 8, 2005, states the following elements as prohibited signs:
– Red Cross
– Red Emblem
– Red Lion and Sun
– Red Crystal (for certain uses)
Please bear in mind that the above-mentioned prohibitions may vary in the severity of their interpretation between jurisdictions. Furthermore, local legislation may include other signs to be considered as prohibited.
For these reasons before proceeding with the filing of your trademark registration application, we strongly recommend that a trademark registrability report be done. This will allow you to have an idea of the probabilities of registration, potentially saving you time and money.
With the exception of “Geographical Indications” and “Denomination of Origin”, trademarks that include known geographical names will likely be refused in most jurisdictions. This is due to the fact that:
1. Consumers may be led to believe that the goods and/or services sold under the trademark are of the geographical origin expressed in the trademark. This may therefore be misleading or indicative, depending on whether or not they in fact do come from the place expressed.
2. The expression may be relevant in the consumers’ appraisal of quality of the products and/or services sold under the trademark, therefore being considered as a descriptive trademark.
Nevertheless, if the geographical name is accompanied by other predominant elements, the trademark may be granted registration in determined situations.
When a trademark is being reviewed to determine whether or not it is adequate for registration, two main factors are considered.
1. Whether the proposed trademark causes conflict with a previously used or registered mark. This analysis is not done in relation to the trademark itself, but rather in comparison with previously registered trademarks.
Therefore, when choosing a trademark you should first make sure that the sign you intend to use is unlikely to be confused with another trademark that has been previously registered for identical or similar goods or services to those of the proposed trademark.
2. Whether the trademark’s configuration or elements may be considered as prohibited signs or if the name of the trademark consists of words common to other traders that offer similar goods or services. This analysis is not done in comparison to other trademarks, but rather in regards to the words or signs that make up the proposed trademark and whether or not it is capable of differentiating the products or services for which it would be registered.
Before proceeding with the filing of your trademark registration application, we strongly recommend that a trademark assessment report be done. This will allow you to have an idea of the probabilities of registration, potentially saving you time and money.
Trademarks, patents and copyrights are all referred to as Intellectual Property rights, nonetheless, they differ in regards to what they are based on, their purpose, requirements, the period of protection they are granted and the geographical scope of their protection.
Please bear in mind that trademark, patent or copyright rights may overlap in certain situations.
Trademarks
A trademark is any sign capable of being represented graphically that may allow for determined products and/or services to be identified with an individual trader, provider or source, be this a person or legal entity.
Patents
A Patent is an exclusive right granted by the state in which it is registered, giving the owner or holder of an invention the exclusive right of use and exploitation of the invention, with the legal authority to prevent third parties from using the invention without the owner’s or holder’s consent.
In order for a patent to be granted, it must comply with the following requirements:
i. The invention must be “novel”. This means it must be new, not only in regards to the country in which patent registration is being sought, but globally. Although there is a short grace period, generally, the publication of an invention in any journal or exposition to the public will cause an invention to lose novelty, and therefore not be patentable.
ii. The invention must be “non-obvious”. Non-obviousness means that the invention is not simply the sum of already existing inventions, or a mere further step in an already existing invention. This analysis will be made by experts in the field in which the invention or patent may be useful and applied to.
iii. The invention must have “industrial application”. This means the invention must be capable of being used by a specific industry in some kind of way. The definition of industry should be interpreted broadly, to include such activities as agriculture or astronomy.
Copyright
Copyright is the combination of legal rights that are exclusive to the creators of an original work; its aim is to protect the expression of ideas of the creator, not the idea itself.
In the overwhelming majority of countries copyright protection is granted automatically upon creation. Therefore registration is not necessary for works to be protected by copyright, but may be useful in preventing future disputes.
Copyright gives the holder the exclusive right to decide whether they or others may reproduce their work, publish it, make copies, perform it in public, communicate it in public or make adaptations based on the protected works.
Example of works that are protected by copyright include literature, artistic and scientific works such as, but not limited to: novels, guides, plays, manuals, thesis, translations, maps, songs, posters, drawings, sculptures, films, architectural designs, web designs, data bases and softwares.
The trademark system (in first-to-file jurisdictions) is built on two general rules, which are:
1. First come, first serve. When applying for a trademark, he who applied first has rights over the trademark. Only owners of previously registered or filed trademarks can oppose registration of the new mark.
2. Protection is granted only in the countries or territories where the trademark is actually registered.
In the case of well-known trademarks, these principles vary. In practically all jurisdictions, the fact that a well-known trademark is not registered locally does not mean that protection and proprietary rights are not recognized. Such protection is recognized for these kinds of marks under the Paris Convention for the Protection of Industrial Property and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).
Therefore, trademarks that are well-known may be protected in some circumstances without registration. If an identical or similar trademark is being registered that may lead consumers into connecting the goods and services with a well-know trademark, therefore damaging or affecting the well-known trademark, the registration of the trademark may be opposed or canceled.
Nevertheless, well-known trademarks should be registered in all countries or territories of interest. Without registration, full protection is not ensured.
Common mistakes when choosing a trademark are:
1. Choosing a trademark that consists of generic terms or elements in regards to the goods or services for which it seeks registration. (e.g. SCREENS for televisions or SMOOTH for skin care products).
A trademark will give its owner the exclusive right to use the words or elements of the trademark in relation to the products or services in the jurisdiction in which it has registered. Therefore, if a trademark consists of elements that are commonly used for such products or services, a trader should not be granted the exclusive right to use it. Although trademarks that consist of generic elements may be registered in determined situations, preventing other traders from using such elements often proves difficult due to the weakness of the mark.
2. Choosing a trademark that is descriptive of the goods or services for which it seeks registration (e.g QUICK AND FAST for computer processors or GREEN MARKET for the selling of vegetables)
When creating a trademark is it very tempting to include elements in the name that may indicate the quality, characteristic, function or purpose of the products or services. A trademark that includes such elements may be refused for registration.
3. Choosing a trademark that includes known geographical names is also a common mistake. The inclusion of these elements may give rise to objections or office actions from the trademark office.
Depending on the actual geographical name, the trademark may be refused due to the qualities or characteristics that consumers may associate with the product due to the geographical name included in the trademark.
For example: FRENCH PURITY for perfumes. Consumers may be led to believe that such perfume is fabricated in France, and being that this is a country known, among other things, for perfumes, the trademark refers to the quality of the products.
4. Choosing a trademark that is identical or confusingly similar to another trademark for similar goods or services. In these cases, as expressed before, being that a trademark’s main goal is to allow consumers in the marketplace to clearly differentiate one from another, trademarks that are identical or confusingly similar to others will surely face objections or office actions from the registration office and may also face third party oppositions.
