Client Question – Does a Valid Trade-mark Have to be Registered?

Q: I have not registered my business slogan. Does this mean it is not trade-marked? 

A: A trade-mark can be words, drawings, slogans or names that distinguish one’s good from the goods of someone else.  Protection of a trade-mark can occur under statute or the common law.  This means that a trade-mark can be protected by virtue of registration with the Register of Trade-marks maintained by Canadian Intellectual Property Office under the Trade-marks Act or, if not registered, the mark can still be protected under common law as long as the mark is distinctive of your goods and services in the region where you use it.

So, as long as your name is being used to distinguish your goods and services, it is still a valid trade-mark and subject to protection even though it is not registered. As an owner of a non-registered trade-mark, you can still bring legal action against someone who is misrepresenting their goods and services with your goods or services or trade-mark.  This is called an action for passing off.  However, you cannot bring an action for infringement which is only available to registered marks.

While registration is not necessary for the creation of rights to a trade-mark or the protection of those rights, some benefits of trade-mark registration include proof of ownership; further protection with an action for infringement under the Trade-marks Act; exclusive rights across Canada for 15 years which can be renewed indefinitely; prevention of others from using a confusingly similar trade-mark; and facilitation of your ability to licence your mark to others.

Denese Espeut-Post is a registered trade-mark agent in the Trade-marks Office.  Contact Avery Law Office to assist you with your trade-mark needs, registrations and maintenance.

Trademarking Punctuation Marks “[ ]” – Who Knew

                Did you ever think punctuation such as “[ ]” could be trademarked? In May 2013, this was discussed by the US Trade-mark Trial and Appeal Board in relation to Casella Wines’ application for the trademark of “[ ]”. It is an interesting case for those interested in intellectual property.            

The two aspects that were examined were the descriptiveness of the mark (does the mark simply describe the product or service or its natural characteristic) and its inherent distinctiveness (the ability of a mark to distinguish a good or service).

Regarding descriptiveness, the board found that the mark was not merely descriptive of wine or alcoholic beverages as it did not relate to the description of “an ingredient, characteristic or feature of wine or alcoholic beverages”.

                Regarding distinctiveness, the court considered the position that the mark was a punctuation mark and could not function as a trademark. The question to be asked is whether the mark is actually capable of distinguishing wines and spirits. What do you think? In this case, because use of the brackets had not commenced, the Board was unable make a finding regarding how the mark would be perceived by the public based upon its actual use (i.e. punctuation vs. trademark). Because a finding could not be made, the Board ruled distinctiveness would not be a bar to the registration of the trademark, but an application to cancel the registration after the trademark was used would be permitted.

                On October 1, 2013, a Notice of Allowance issued for the mark. This means Casella Wines has 6 months to commence using the mark or request an extension.

Denese Espeut-Post is a registered trade-mark agent.  Visit Avery Law Office for your trade-mark needs, registrations and ongoing maintenance.