Why File Trademarks?
As discussed in another article, a trademark protects a brand. So what is a brand?
A brand is the accumulation of reputation or goodwill that you’ve developed in your business. That reputation may be tied to your business name, the name of your product or service, or even a logo. It’s something that consumers see, and instantly associates with your business.
So why should you protect this reputation and goodwill, and from what?
One of the main reasons for protecting a brand is to prevent others from capitalizing on the reputation that you’ve developed. If you’ve spent years developing a positive reputation through consistently offering high quality products and services, it would be unfair for a competitor to adopt a similar brand and effectively use your own reputation to compete against you.
Worse yet, the competitor may not have the same standards of quality that you’ve set in place, and tarnish your brand by leading potential customers to believe that the inferior products or services are associated with your company.
The question now becomes how to effectively protect your brand.
For businesses that are just starting out, registering a trademark will reserve your right to use the trademark, and prevent others from using or trying to register for similar or confusing trademarks.
Note that you do not need to register your trademark in Canada to have rights in a brand. Through continuous use, you develop what’s called “common law” trademark rights, which belong to you or your company regardless of whether or not you have a registration. With these rights, you may still pursue potential copycats in the Canadian courts by claiming what’s called “passing off”, by alleging that the copycats have passed off their goods or services for those of yours. However, in order to succeed in such a claim you need to prove that:
1) you’ve developed a reputation or goodwill in the area they are operating;
2) that they’ve deceived the public by their misrepresentation (e.g., by mimicking your brand or product); and
3) that you’ve suffered damage or are likely to suffer damage as a result of their acts.
These requirements make it very difficult, if not impossible to make a claim against a copycat which does not operate in your region as it would be difficult to prove reputation where you don’t operate. Also, if your brand has not developed the necessary level of reputation or goodwill, then it will also be difficult to succeed on a passing off claim.
If these are concerns for your business, then obtaining a trademark registration is recommended. A trademark registration provides the owner with exclusive rights to the trademark across Canada, and does not require the owner to prove any goodwill or reputation associated with the trademark. Furthermore, a trademark registration will put others on notice that you have adopted the trademark, and will prevent others from trying to register a similar mark for similar goods or services.
If you need more information, please contact Jerry.
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