ILA – Signing on the Dotted Line

Published in Orchard and Vine Magazine on: February 12, 2016

How do you feel about acronyms? Sometimes it can be a fun guessing game. How about this one… ILA? Independent Learning Academy…Interior Logging Association…and my personal favorite, Independent Legal Advice.  Okay, maybe not as exciting as the International Lime Association, but still worth talking about.

Most of you have probably heard of ILA (Independent Legal Advice) before. Some of you may have been told that you must have ILA before signing a contract or a bank guarantee. So, what is ILA? The need for ILA often arises if a person is not represented by a lawyer and is at risk of not fully understanding the consequences of a transaction. In certain situations, you may need to receive legal advice from an independent lawyer who is free of any bias. Neither that lawyer nor any of that lawyer’s clients can have an interest in the matter requiring the ILA. In certain other situations, you (or your lawyer) may require that someone you are contracting with must obtain ILA.

ILA is commonly required if you will be guaranteeing a loan for someone else or you are entering into a domestic family law contract such as a separation agreement or a cohabitation agreement. ILA can also play an important role in employment contracts, when negotiating severance packages, and prior to signing corporate documents as a minority shareholder or to document other corporate transactions between shareholders.

It may not always be clear if you should obtain ILA or if you should have someone who you are about to contract with get ILA. ILA can certainly protect you as a person entering into a contract. But, on the flip side, it can also protect the person you are contracting with by helping to ensure the enforceability of the transaction. For example, we have all heard of situations where someone will try to avoid a contract by stating, “I didn’t understand what I was signing.” While this is a difficult argument to successfully make, it will be even harder to establish if an independent lawyer certifies that legal advice was provided and that advice was understood by the person who is now taking the opposite position. Going one step further, a person can attempt to avoid a contract by stating “I understood what I was signing, but I was pressured to sign and did not act freely.” Once again, ILA will directly Impact the strength of that argument if an independent lawyer certifies their opinion that the person entered into the transaction voluntarily.

Now that you know what ILA is and when you may need it, let’s talk about what you should expect when you see a lawyer for ILA.  Lawyers have a codified standard of care that must be followed in providing legal services and dealing with clients. When you receive ILA, you are the lawyer’s client and the same duty is owed to you as an “ordinary” client.  Your lawyer should be honest, candid and explain the legal aspects of the transaction to you and ensure you understand what you have been told. Your lawyer will also confirm that you have capacity to enter into the transaction and that you are not experiencing any undue Influence or coercion to proceed.

It is not always easy for a lawyer to provide ILA, especially if the person seeking ILA feels very passionate about a transaction and does not wish to hear any potential negative consequences from a lawyer they really don’t know that well. To make sure your lawyer acts appropriately and you get the advice you need, be prepared to disclose all relevant facts and provide information to your lawyer when he or she asks you questions to better understand the transaction.

Often, the work completed by a lawyer providing ILA will be limited to reviewing and explaining the provided documents and ensuring you understand the documents. If this is the case, the lawyer will advise you of the limited extent and scope of their services. The work to be completed would likely not involve the negotiation of different terms, although you may be able to extend the scope of the work completed to include this.

There are many benefits when it comes to ILA. Whether you choose to represent yourself in a transaction, are required to obtain ILA by another party or want to have someone you are contracting with receive ILA before signing on the dotted line, take the time to find an independent lawyer with knowledge in the area of law in which your transaction, provide all of the necessary documentation, frankly answer the questions that are asked of you and ensure you obtain the answers you require so you enter into enter the transaction voluntarily with a full understanding of the legal consequences.

Protecting Brand Advertising Key to Business

Published in Orchard and Vine Magazine on: December 2, 2015

We are wrapping up our trilogy on branding with this column. Let’s talk about protecting brand advertising. Your brand image represents what your customers think of and associate with your brand; it embodies the value of your brand. You have worked hard to establish a positive brand image and you will want to make sure that your positive brand image is communicated to your customers. This is achieved through brand execution and the experience you create for your customers. When creating that customer experience, you will need to consider your brand position which is the message that you want to leave with your customers about your brand. All of this will be achieved with brand advertising.

We all know how important brand advertising is as well as how costly and time consuming it can be to produce and carry out. Given how much is invested in your brand advertising, it is important to give some thought to the protection of that advertising.

We have previously spoken about the many benefits of trademarking. Realistically, the chances are that your entire advertising campaign will not be able to be trademarked. However, if you make use of a slogan in addition to your logo, your slogan should also be registered as a trademark. Registration will give you rights in the slogan across Canada and allow you to bring an action for infringement against others who use a confusingly similar slogan, mark or name. You will also want to ensure you own the copyright in your slogan if it is created by someone other than you. The copyright gives you the sole right to produce or reproduce the slogan and you may be able to bring an action for infringement if a competitor interferes with your copyright.

Be aware of producing any misleading advertising. The Competition Act deals with advertising and seeks to prevent false representations and misleading claims in the marketplace. If this should accidentally occur as part of your brand advertising, immediately publicize a correction notice and take the necessary steps to fix the errors. The timely efforts you make to remedy the mistake will be considered by the Competition Bureau in deciding if proceedings relating to the misleading advertising should be started. Also, claims regarding the performance of your product should be avoided unless the claims are based on proper tests using appropriate methodology. Ensure the claims accurately reflect the data obtained from the tests.

Comparative advertising occurs when one product is compared to another, often competing, product. As long as it is accurate, comparative advertising helps consumers make more informed choices. However, if you are concerned with a competitor’s conduct in comparative advertising because your competitor’s advertising is reckless, false or misleading, swift action against the competitor must be taken to protect your branding. Actions may be brought under the Competition Act, Trademarks Act, Copyright Act or other common law causes of actions.

Remember that your brand is an asset. It has considerable value and must be protected. If your brand image is damaged or disputed, re-branding your product or services will be a very expensive and lengthy process which you will want to avoid. The exercise of branding is on-going. It begins when you first select the components that make up your brand and determine the availability of those components in the marketplace. It continues with the registration of your trademarks and ensuring ownership of your copyrights. It carries on with the on-going policing of the marketplace and challenging competitors making use of competing marks or slogans.

Building and maintaining a brand can be challenging. Speak to your professional advisor for assistance with your brand development and maintenance.

The ‘How-to’ of Protecting Your Brand Name

Published in Orchard and Vine Magazine on: October 8, 2015

If you enjoy a good trilogy, you are in for a treat.  The Legal Libations “Branding” Triology is underway. In my last column, the focus was branding on the Internet.  We chatted about domain names, cybersquatting, compliance with the laws of your consumer’s jurisdiction for interactive websites and the creation of privacy policies. In this issue, we will discuss trademark registration for brand name protection.  Next time we will talk about developing brand management strategies.


The Benefits of Registering your Brand as a Trademark

  1. Confirms the legal validity of your mark
  2. Exclusive right to use your mark throughout Canada even though you may only be using your mark locally
  3. No person with a confusingly similar mark will be able to obtain registration
  4. Your trademark can be sold or licenced for a profit
  5. You can bring court actions for infringement or the depreciation of the goodwill attached to the mark
  6. Protect your trademark abroad, you can apply for a priority registration in several other countries

Now that you have spent time and energy developing your brand and choosing your brand name, you need to protect that precious name.  This is commonly done by registering your brand name as a trademark with the Canadian Intellectual Property Office and, if necessary, bringing court actions for trademark infringement to prevent another person’s use of a trademark or trade name that is confusing with your brand name.

In Canada, we have a national public registry system for every registered trademark. This system protects the rights of owners of registered trademarks by giving public notice of the exclusive rights held by these owners.

If you choose not to register your brand name as a trademark, you may still have some rights in your brand name.  You obtain these rights by actually using your brand name with your goods or services.  As your name becomes known, you build up goodwill and your mark becomes distinctive, you can bring a court action against another person who uses a confusing unregistered trademark in the area where you have acquired the goodwill in your brand name.  However, you will have to prove that your brand name is distinctive (which is not something that you would need to prove with a registered trademark).

As an unregistered trademark owner, you can also oppose an application for the registration of another person’s trademark. For a period of 5 years after registration, you can attack an existing registration based upon your prior use of your brand name and try to have the registered trademark expunged from the registry.  After the 5 year period, if you fail to challenge the registered mark, the registration will be incontestable even though it is the same as or confusingly similar to your brand name (unless you can prove that the owner of the registered mark had prior knowledge of your use of your brand name at the time their mark was adopted).  If you failed to challenge the registered trademark and protect your unregistered brand name, the Trade-marks Act may offer some protection.  The Federal Court of Canada may authorize you to continue to use your brand name concurrently with the registered mark in your defined area if it is not contrary to the public interest. This is not an ideal end result for a business owner who decided against trademark registration.  To avoid the risk that you may lose or have to share your unregistered trademark with a registered mark, consider filing an application to register your brand name as a trademark.

As a brand owner, you need to know what is happening in the marketplace to ensure your rights are not being infringed and you are taking adequate steps to protect your rights.  You should be continually on the lookout.  You can even hire a professional company as a watchservice to ensure the marketplace is properly monitored.  Actions for infringement need to be brought quickly.

Speak with a registered trademark agent or a trademark lawyer for additional information about branding or your trademark registration application.

Protecting Your Branding on the Internet

Published in Orchard and Vine Magazine on: June 2, 2015

Branding is an important part of any business.  No matter what type of business you are in, there is value in your brand.  Maybe your orchard, vineyard or winery has a particular name, slogan or symbol which you use to distinguish your goods from your competitors.  Your customers recognize your name and they will choose to give you their business because they value your service and your product; they will accept no substitutes.  A strong brand gives you an incredible competitive advantage. Promote your brand and protect your brand.

The internet has a massive impact on branding and has many benefits.  You can personally connect with potential customers who are not in your town or city expanding your potential client base.  You can offer loyalty programs and encourage your customers to make multiple purchases. You can use your website to communicate with and distribute your product to your clients. You may even benefit from viral marketing which results from your customers sharing information about your business with their own personal network.  Simply, the internet allows you to manage your traditional customers more efficiently and promote your brand more broadly.

When you expand your branding strategy to the internet, you should make some time for online monitoring for two main reasons. First, internet branding often comes with non-traditional forms of “word of mouth” advertising such as discussion boards, consumer rating websites, blogs and review forums.  Many people use the internet to obtain product information and reviews.  Online monitoring may help you to learn what your customers think you are doing well, could be doing better or avoid a “viral” customer complaint.  Second, as with other forms of branding, there is a risk for abuse (such as typosquatting or the sale of counterfeit product) that can lead to lost revenue or damaged reputation if not identified and addressed.

An important part of branding is selecting a domain name which is consistent with your brand (for example, averylawoffice.ca is my business domain).  Remember, when dealing with domains, the registration system is first come-first served. Unlike trademarks, there is no process in place to determine a person’s entitlement to a domain or to allow a challenge to a prior legitimate registration based upon competing use. This means that there can be conflicts between businesses that have legitimate rights to the same name.  There can only be one averylawoffice.ca, but a competing business may own averylawoffice.com, averylawoffice.org and averylawoffice.net.  When registering your domain name, think about whether you should obtain other names to allow for future expansion or to prevent others from obtaining them.  You can also consider registering your domain name as a registered trademark.

When it comes time to registering your domain name, you may find that the name you want has already been registered to someone else.  If the registration is legitimate, you will need to select another name or attempt to acquire rights to the name directly from the owner.  If the registration is illegitimate, this is cybersquatting.  Cybersquatting occurs when someone registers a domain name similar to a brand name to which they have no claim and later tries to sell the domain name to the brand owner.  This is an abusive form of registration and proceedings can be brought under the Uniform Domain Name Dispute Resolution Policy.  Court actions for trademark infringement or passing off may also be considered on advice from your lawyer.

Another form of abuse, typosquatting, occurs when someone registers a domain name that is identical to a brand name except for a minor misspelling with the intent that they will get hits from people who mistakenly type the brand name.  As noted above, online monitoring and policing will help avoid negative impacts from such abuse.

Website optimization is also an important aspect of internet branding.  Metatags and keyword summaries for your website are vital to the best search engine results.  Linking to images or documents on other websites is also beneficial and should be undertaken on a case-by-case basis, preferably with the consent of the other website owner to avoid any potential claims for defamation or copyright infringement.

If you have an interactive website that can be accessed outside of Canada, it is recommended that your website comply with the laws in force in the areas where your customers are actually located.  Relevant laws may include intellectual property laws, consumer protection, product liability and defamation.  Alternatively, your website may include a disclaimer which sets out the governing law and jurisdiction (e.g. BC law) which your customers must accept to continue on to your site or make an online purchase.

Finally, to comply with Canadian privacy legislation, your business should develop a website privacy policy which sets out the personal information being collected, why and how it is collected and who has access to it.