Should I Trademark It?

July 25, 2016

News

[Feature image © Sílvia Antunes | Dreamstime.com – R Registered trademark]

One of the most common questions I get from clients is: Should I trademark my name/slogan/logo?

With a registered trademark, your rights go beyond that of those in an unregistered trademark, to which you also have certain rights under the Canadian Trade-marks Act. The challenge of protecting an unregistered trademark is that your main remedy is called “passing off”, which can be difficult to prove, because of the technical requirements and such a court action only fits a narrow set of circumstances. Only registered trademark owners can sue for trademark infringement. While you have to still make out your case to the court when suing for infringement, you would have one strong advantage: the law assumes that trademark registration is proof that you own that trademark. It will be up to the person you are suing to prove that they are not infringing and/or to bring forward evidence that they have better rights to the trademark. So, immediately, you would be in a position of strength with a registered trademark. Perhaps just as important, your registration gives you 15 years (about to change to 10 years next year) of exclusive rights to your trademark, which is renewable when that time is up.

Your registration rights include, among other things, the protection against others using trademarks that are “confusing” with yours. This is a powerful, because your registration rights do not just protect you from someone using exactly your trademark, but also protection from someone using something similar to your trademark so that it can be considered “confusing” with your trademark. As a somewhat absurd example, someone’s use of the mark Moca-Cola for soft coffee-flavoured beverages would most likely be deemed confusing with the registered Coca-Cola trademark, and thus could be subject to a trademark infringement claim. While this may also qualify as “passing off”, the availability to (also) sue for trademark infringement would give the owner of the Coca-Cola trademark very powerful tools for enforcing its trademark rights. So, to recap, below are some advantages to registration:

  • Proof of ownership
  • Trademark infringement protection
  • Exclusive right to use throughout Canada for 15/10 years
  • Protect against “confusing” use

While those are the advantages of registering your trademark, we have to look at what that means for your business. A trademark, as intellectual property, is property of your business and thus, it is an asset. It is an intangible asset, but for many businesses, it may be their most valuable asset because it can embody your reputation and all of the good will you have built up in your business. For example, what would that Louis Vuitton man purse I’m coveting be really worth if you were to all of a sudden strip away the Louis Vuitton trademark from it? It would likely sell for significantly less than the listed $3,250 price tag. So brands can be worth big money. While it may be hard to put a dollar value on your brand, ask yourself: how much would it cost me in business and how much would I have to spend to rebrand if someone were to all of a sudden tell me that I could not use my trademark? A registered trademark would go a long way in protecting your brand and, therefore, real value in your business.

The drawback to registering your trademark is that it can be expensive. While the (current) government fee is just $250 for filing an application plus the $200 registration fee at the end, if you hire a trademark lawyer or trademark agent to do it for you correctly, then your costs from start to finish can look more like $1500 including all fees. The reason why we money-grubbing trademark lawyers or agents charge so much is because we provide the advice and service to make sure your application is drafted properly giving you as broad of protection as possible. You also pay us to “prosecute” the application through the entire process, which can take 12 to 20 months for a relatively problem-free application to be fully registered. Trademark registration is a process because the rights granted are powerful, so the trademark lawyer or agent pushes your application through examination at the Canadian Intellectual Property Office and against any potential opposition.

In the end, trademark registration gives you powerful rights under the law to protect a valuable asset of your business. It will be up to you to weigh whether filing for a trademark registration of your name, slogan or logo will be worth the money to gain those rights only available to registered trademark owners.

(Note that an earlier version of this article was originally published on the Business Success Blog here: http://businesssuccessblog.blogspot.ca/2015/04/could-trademark-protect-your-brand.html)


One comment on “Should I Trademark It?


  1. Matt Miciula says:

    Thanks for sharing Greg! Very insightful information.

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