Protecting your brand with trademarks

By Nicole Merrick. 

We have all felt in recent days the uncertainty triggered by U.S. discussions of policy changes on international trade. At the moment, it is unknown what effect these changes may have on the Canadian manufacturing industry, both at home and abroad. Where old trade paths need to be reconsidered and new trade relationships forged, it makes good business sense to consider your brand and how it represents your business.

Branding is a key characteristic of a successful business. Not only should manufacturers consider their business and corporate names, but also their trademarks in the form of wordmarks, designs, slogans, and product packaging, for example, as these marks stand for or symbolize your products, product lines, and your services in the marketplace.

Often, the question I get from clients is, “Where do I begin?” My first response is to advise that a client take stock of what it has. What marks or brand names are you using at present? What marks or brand names have you used in the past? How does what you have reconcile with your vision for your business over the next number of years? What steps have you taken to protect your brand thus far?

The goal of a good trademark lawyer is to help you protect your brand — your vision for your business, products, and services. While it is possible at law to rely on common-law rights to protect your trademark interests, there is significant risk to leaving trademark rights unregistered. Common-law rights exist only where they can be proven, and are limited even then to a specific jurisdiction where reputation has been definitively shown to exist. While it may sound simple (you know you have a great product, and you know people recognize your brand in your home city, for instance), proving your rights in court is a very challenging and costly endeavour.

Relying on common-law rights also has limited utility. Given that the scope of protection for common-law rights is limited to the jurisdiction in which you have established that reputation, this would not necessarily prohibit someone else from adopting the same or similar mark in another city or province outside of that territory.

Canadian registration of your trademark rights, by contrast, provides national protection. If you file, and if your trademark application is granted, then protection exists across Canada. Registration of your trademark may also block the registration of confusing business or corporate names depending on provincial registry systems. Trademark registrations are renewable and last for a period of 15 years.

Applications can be filed in other countries as well, depending on where you use or intend to use or protect your trademarks. Each country typically has its own registration system, though there are a limited number of registrations that cover multiple jurisdictions, such as a Community Trademark filing in the European Union. Your business plan — and your budget — should take into account registration and protection costs to best define and protect your business.

Developing a trademark portfolio gives a business assets that it can potentially license and sell to others, or which can form a valuable asset when obtaining financing.

Trademark registrations are also much easier to enforce than relying on common-law rights, legally speaking. While registration adds some cost to your bottom line, the protection granted can save both significant expenses long-term and add valuable assets to the overall value of your business.

In short, registration makes good business sense and is a tool in the business owner’s toolkit to both grow and protect your business in the days ahead.

Nicole Merrick is a partner and trademark agent with Taylor McCaffrey LLP — one of Manitoba’s largest law firms.