LAW206_Slides_Week6.pdf

Trademark Registration Part 1 MORG AN JARVI S FACU LTY OF LAW QU E E N ’ S U N I VE RSI TY Trademark Registration Process 1 File an application with registration fee with CIPO (online) 2 CIPO will send acknowledgement within 7 days – review and ensure the information is correct 3 A trademark examine...

Trademark Registration Part 1 MORG AN JARVI S FACU LTY OF LAW QU E E N ’ S U N I VE RSI TY Trademark Registration Process 1 File an application with registration fee with CIPO (online) 2 CIPO will send acknowledgement within 7 days – review and ensure the information is correct 3 A trademark examiner will review your application and determine if the trademark can be approved for advertisement in the Trademarks Journal (approx 6 months). If they have objections, they will engage in correspondence with the applicant, who has a chance to respond. a) Refusal – chance to appeal to Federal Court b) Acceptance – application proceeds to advertisement in approx 5 weeks Trademark Registration Process 4 Advertisement in the Trade-marks Journal with chance for others to oppose registration within 2 months. 5 If opposition, go to Trademarks Opposition Board (complex proceedings that can take years). If not, registration allowed within 3 months of advertisement and registration steps must be taken (fee, declaration that mark now in use). When is a Trade-mark Registrable 12 (1) …a trade-mark is registrable if it is not: (a) a word that is primarily merely the name or the surname of an individual who is living or has died within the preceding thirty years; (b) whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive in the English or French language of the character or quality of the goods or services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin; (c) the name in any language of any of the goods or services in connection with which it is used or proposed to be used; (d) confusing with a registered trade-mark; When is a Trade-mark Registrable 12 (1) …a trade-mark is registrable if it is not: (e) a prohibited mark; (f) a denomination that must be used to designate a plant variety under the Plant Breeders’ Rights Act; (g) & (h) a geographic indication; (i) prohibited mark under the Olympic and Paralympic Marks Act. When is a Trade-mark Registrable 12 (2) A trade-mark that is not registrable by reason of paragraph (1)(a) or (b) is registrable if it has been so used in Canada by the applicant or his predecessor in title as to have become distinctive at the date of filing an application for its registration. (a) being the prohibition against registering a mark that’s primarily merely a name. (b) being the prohibition against registering a descriptive mark. Trademark Registration Part 2 MORG AN JARVI S FACU LTY OF LAW QU E E N ’ S U N I VE RSI TY Trademark Registration To be entitled to register a mark, need to consider the mark in light of Section 12 Is the mark just a name? Is the mark descriptive of the goods or services? Is the mark confusingly similar to others already in use? Need to search what’s already in the market. Searches are mainly to ensure that there aren’t other marks in use or registered that are confusingly similar with the applicant’s mark. Trademark Searches Search for confusingly similar marks in use with similar goods / services: Internet search engines like Google Look for similar marks used with similar goods or services. CIPO tm database Use the advanced search to search for the desired mark, and similar words, with the same and similar goods and services listed in another search query. NUANS for registered business names and/or Corporations Canada corporate name search NUANS is more comprehensive but there is a fee. Telephone directory searches Consumer Confusion Definition Confusion: The use of a trademark causes confusion with another trademark if the use of both trademarks in the same area would be likely to lead to the inference that the goods or services associated with those trademarks are manufactured, sold, leased, hired or performed by the same person, whether or not the goods or services are of the same general class. – Trade-marks Act, Section 6(2) Consumer Confusion Definition In determining whether trademarks are confusing, have regard to all the surrounding circumstances including: (a) the inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known; (b) the length of time the trade-marks or trade-names have been in use; (c) the nature of the goods, services or business; (d) the nature of the trade, and (e) the degree of resemblance between the trade-marks or trade-names in appearance or sound - Trade-marks Act, Section 6(5) or in the ideas suggested by them. Consumer Confusion: Resemblance S. 6.5 (e) the degree of resemblance between the trade-marks or trade-names in appearance or sound or in the ideas suggested by them. Most important consideration, since if the marks aren’t at all similar, then there’s no chance of confusion. Marks need to be considered as a whole, considering word and design elements, and then other factors in the S. 6.5 list. Consumer Confusion: Resemblance S. 6.5 (a) the inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known; (b) the length of time the trade-marks or trade-names have been in use; (c) the nature of the goods, services or business; (d) the nature of the trade. Trademark Registration Part 3 MORG AN JARVI S FACU LTY OF LAW QU E E N ’ S U N I VE RSI TY Type of Mark to Register For both deciding on branding strategy, and what mark to register if branding has already been selected, the confusion search and other Section 12 factors will dictate what sort of mark to register. Registering just the word (“word mark”) generally provides the broadest protection, but may not be registrable because it’s mostly a name, descriptive, or confusingly similar with another brand already in the market or already registered. For example, google. o Has a range of marks covering variations, including colour, and stylized font, but most importantly, has GOOGLE (word mark with no specific design features registered). Type of Mark to Register GOOGLE REGISTERED GOOGLE (Stylized) REGISTERED GOOGLE (Stylized) (Colour) REGISTERED Type of Mark to Register Trademarks are considered as a whole when considering distinctiveness and potential confusion, so registering as a design mark might make for a successful trademark registration where the word mark alone might otherwise fail. Including design features of the wording in the registration; Register a logo/design with the wording; and/or Register just a logo instead of ineligible words. Type of Mark to Register, examples Enviromet (Considering “Environet” already in use in similar field) OR Type of Mark to Register, examples HOMELESS CONNECT TORONTO (Considering Project Homeless Connect is the generic name of a movement across US and Canada) OR “Where any mark has by ordinary and bona fide commercial usage become recognized in Canada as designating the kind, quality, quantity, destination, value, place of origin or date of production of any goods or services, no person shall adopt it as a trade-mark in association with such goods or services or others of the same general class ….” – Section 10, Trade-marks Act Type of Mark to Register, examples MACKINNON BROTHERS BREWING CO. (Considering the prohibition against both registering marks that are primarily names or that are primarily descriptive of the goods or services or the people making them.) OR Choosing a Mark to Build a Brand Don’t just use a name, a term that describes the goods or services, or their place of origin, etc. Make sure there isn’t something similar already in the market or registered in association with similar goods or services. Mark needs to be distinctive o Words with positive meaning not logically related to your goods or services, like Nike. o Coined or novel words like Google, Kijiji, Domain Name Disputes MORG AN JARVI S FACU LTY OF LAW QU E E N ’ S U N I VE RSI TY Domain Names and Cybersquatting Ideally, business founders build their branding strategy with available domain names in mind. Businesses who’ve built goodwill in a mark that they haven’t also secured as a domain name, may be subject to “cybersquatters”. Solution to Cybersquatting Trademark infringement action is usually more expensive than the amount sought by cybersquatters, and may not even be applicable in the cybersquatting context. ICANN (Internet Corporation for Assigned Names and Numbers) developed the Uniform Domain-Name Dispute-Resolution Policy (UDRP) to quickly resolve domain name registration disputes. Canadian Internet Registration Authority (CIRA) developed the CIRA Domain Name Dispute Resolution Policy (CDRP) for.ca domains. Solution to Cybersquatting: CDRP When you register a.ca domain name, you agree to be subject to the CDRP. o Alternative dispute resolution proceeding for domain name registration disputes, decided by panel of experts, rather than judicial proceeding. Complainant files complaint re improper domain name registration with CIRA under the CDRP, arguing that: (i) Registrant’s domain name is confusingly similar to a mark in which the Complainant had or has rights, (ii) the Registrant registered the domain name in bad faith, and (iii) the Complainant must provide some evidence that the Registrant has no legitimate interest in the domain name. CDRP: “Bad Faith” UDRP (.com) approach to “bad faith”: “Evidence of Registration and Use in Bad Faith. ….the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: ….” CDRP approach to “bad faith”: “Registration in Bad Faith. …. a Registrant will be considered to have registered a domain name in bad faith if, and only if: …...” CDRP: “Bad Faith” (paraphrasing)… (a) …registered or acquired the domain name primarily for the purpose of selling, renting, licensing or otherwise transferring the Registration to the Complainant, or to a competitor of the Complainant for valuable consideration in excess of the Registrant’s actual costs in registering the domain name, or acquiring the Registration; (b) the Registrant registered or acquired the domain name in order to prevent the Complainant from registering the Mark as a domain name, provided that the Registrant has engaged in a pattern of registering domain names in order to prevent persons who have Rights in Marks from registering the Marks as domain names; or (c) the Registrant registered or acquired the domain name primarily for the purpose of disrupting the business of the Complainant, who is a competitor of the Registrant. CDRP: “Legitimate Interests” (paraphrasing)… 3.6 Legitimate Interests. The Registrant has a legitimate interest in a domain name if, and only if, …: (a) the domain name was a Mark the registrant had rights in; (b) the Registrant used the domain name in good faith in association with any goods, services, etc., of which it was clearly descriptive of the character or quality of the goods, their place of origin, etc.; (c) the Registrant used the domain name in good faith and it was the generic name of the goods or services, etc., it was used in association with; CDRP: “Legitimate Interests” (paraphrasing)… 3.6 Legitimate Interests. The Registrant has a legitimate interest in a domain name if, and only if, …: (d) the Registrant used the domain name in good faith in association with a non-commercial activity including, without limitation, criticism, review or news reporting; (e) the domain name comprised the legal name of the Registrant or was a name, surname or other reference by which the Registrant was commonly identified; or (f) the domain name was the geographical name of the location of the Registrant’s non-commercial activity or place of business.