It provides you with the ability to enforce your intellectual property rights in your small business across Canada, not just your community
I am in awe of small business owners. As a legal advisor to many startups, nothing gets me energized quite like the enthusiasm of passionate entrepreneurs, either in the midst of growth so relentless they can’t keep up, or when they’re closing in on bringing a much-needed and unique product or service to market.
These business owners put their blood, sweat and tears (figuratively, for the most part, but in some instances literally) into the venture, and the drive is contagious.
But it never ceases to amaze me how many of these business owners take for granted the importance of obtaining trademark registration to protect their brand.
Look, I get it. At a startup stage, budgets can be tight and, let’s face it, even in the best of times, businesses are not exactly eager to pay legal fees. But in my experience, the cost of taking adequate steps to protect a new or emerging brand are far lower than the costs of defending allegations of infringement or, worse, of having to rebrand.
A trademark is not your corporate name (e.g. ABC Inc.). That is the legal name given to the corporation, which is considered a legal person at law. A trademark is not your business name. That is the name under which your corporation carries on business, if different from your corporate name. A trademark is kind of, but also not quite, your brand. A brand is a broad and multi-layered concept that defies definition. A brand is something you know, something you see, something you feel.
A trademark is the words or images that are used to distinguish your goods or services manufactured, sold, leased, hired or performed from those manufactured, sold, leased, hired or performed by others. In other words, it is how the public identifies your goods and services, and the quality associated with them, as distinct from others’.
A trademark registered under the federal TrademarksAct is a powerful asset. It provides owners with the ability to protect their trademark and enforce their intellectual property rights in it across all of Canada. It serves as a public notice on the Canadian Intellectual Property Office (CIPO) database that that trademark is taken and not available for anyone else to use. In essence, it is the starting point for the legal means by which your brand is capable of being protected.
Without the benefit of federal trademark registration, your trademark has “common law” rights, which affords you the ability to protect your trademark and enforce it against others only in the commercial area in which you are known. In many cases, that scope of protection can be very narrow.
A registered trademark is also a valuable asset to some other parties, such as acquirers of, or investors in, your business. They can take comfort in seeing registered trademarks because it signals that the brand is capable of being protected and less likely to be subject to claims that would result in having to change it. A registered trademark also provides your licensees with confidence that the brand they are paying for is not subject to volatility arising from third-party claims, making the value of your licence stronger.
A trademark is much more than a rubber stamp. First, get a trademark lawyer to assist you with searching the CIPO database to get a sense of the likelihood that your trademark can be registered. While it can be painful to hear that the trademark may not be registerable or is likely vulnerable to attack from third parties owning identical or similar marks, making hard rebranding choices at this stage is far easier than several years later when business is humming.
Once your trademark application is filed, CIPO trademark examiners may take up to 10 months to even get a response to you, and that response could range from an approval, to a request that a technical change be made to your application, to barring you from registration as a result of other similar marks that have rights in priority to yours. Your trademark lawyer’s searches should have given you a reliable preview of any of those possible obstacles.
If you clear the examination stage, your trademark is open to a two-month window within which interested third parties can oppose your application and, if nobody does, your trademark is registered. Well, kind of. Currently, before your trademark can be registered, you have to declare to CIPO that you are actually using it, but that prerequisite will be limited at some point in 2019 owing to major amendments coming to Canadian trademark laws.
Being on the receiving end of a cease-and-desist letter can really take the steam out of your enthusiasm. After you’ve invested so much into the growth of your business, learning that challenges to your use and ownership of the brand threaten to derail your goodwill can be frustrating and disheartening. Taking steps to understand the landscape for the availability of your trademark and properly registering it to both protect your mark and enforce your rights against others is invaluable, and the earlier those steps are taken, the better your brand will be for it.
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