The most important, and most often overlooked, aspect of giving
validity and value to your company's trade-marks is how they
are "used." Unlike copyright works or patented
inventions, that remain protected even if never exposed to the
public, trade-mark protection only exists if your product or
service is actually being sold to the public under the
"brand" that is your trade-mark.
This is because trade-mark law arose as consumer protection law
in industrial revolution England – so that your average
upwardly-mobile peasant could differentiate between the beer from
Stoke-on-Trent and that from Wiggles-on-Thames. Unless consumers
are seeing trade-marks in the marketplace, to help them choose the
products they prefer, a trade-mark has no point.
This is also why, when you wish to file a trade-mark application
to protect your current or proposed brand, you may be driven to
distraction by your trade-mark lawyer's seeming obsession with
the details of your "use" of your trade-mark. This
is merely our superpower, which we are using for good - one wrong
move in asserting and recording the details of your
trade-mark's use can result in invalidity of your registration,
and loss of the protection of your valuable brand.
These heroics are very important at the time your trade-mark
application is filed. In the trade-mark application, you
irrevocably commit to either a specific historical date when
"use" of the trade-mark commenced in the marketplace, or
the assertion that you have not yet "used" the trade-mark
at the filing date. Getting "use" versus
"proposed use" wrong happens surprisingly frequently,
because companies confuse "creating the brand" with
actually selling products under the brand. Also, a company will
often apply to protect a trade-mark many years after it started
selling under that brand, but will have no accurate records of when
the first sale, or "use" occurred, making the assertion
of an historical first use date inaccurate.
The importance of "use" continues after a trade-mark
is registered – ask any corpulent penguin. The
"corpulent penguin" case is a well-known Canadian
trade-mark decision, where the Stanfield's clothing company had
for many years sold clothing bearing a registered trade-mark logo
of a typical, though trim, penguin. At some point, the
Stanfield's marketers decided to fatten up the ol'
fish-eater in the logo. This more corpulent bird eventually
became the one exclusively used on the clothing products. A
competitor then successfully had Stanfield's long-standing
trade-mark registration declared invalid, on the basis the change
of the logo was use of a different trade-mark, and
therefore an abandonment of the "use" of the registered
slim penguin logo.
So, let your brand find marketplace enlightenment by making your
company's policies one with the rules of trade-mark use. If you
have any questions regarding use of your trade-mark in the
marketplace, or to discuss trade-mark registration generally,
please contact our
Intellectual Property and Technology Group.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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