It turns out that there is a new frontier in trademark law, but
you have to look very closely at your computer screen to see it.
Take a close look at the beginning of the URL line for most
webpages you visit, including well-known websites like Google, Wikipedia, Minden Gross LLP, The New York
Times, etc. and you will start to see what I mean. There are
tiny icons with version of those company's logos, appearing in
the URL line. These tiny icons are known as
Figure 1 – Favicons in a web browser
(indicated by red circle).
For some time there has been some controversy over how one might
trademark a company's URL (being its internet address: i.e. www.mindengross.com) The conventional wisdom
is that most often the URL is not using the brand as a trademark
and that therefore trademark protection may not be available.
Favicons may be changing that.
Although technically available since 1999, favicons have really
only gained popularity in the past few years. Now they are
ubiquitous. The question is, can they be protected by trademarks,
when the old URL could not be? The answer appears to be yes. For
example, last year Google was successful in getting its
"G" logo (which it uses as a favicon – see Figure
1.) trademarked in Canada (TMA861392).
When one considers it, we realize that the favicon is, in fact,
very much like the original idea of a trademark. They are small
icons that indicate the source of the website you are about to view
and confirm it is legitimately the website you were seeking. It is
easy to see how the use of the icon is distinct from the use of
just the URL address and easy to see how trademark rights would be
available, in most cases.
Some people may say that it is not necessary to register the
favicon as a trademark if you already have the logo (in which the
favicon might appear in part) registered. This is incorrect.
Experienced trademark practitioners will tell you that if you have
a trademark for a logo, but you fall into the bad habit of using
only part of that logo, not only will you not necessarily have
protection in that logo fragment, you may negatively impact your
rights in your main logo. Having protection for just the logo will
not protect use of part of it as a favicon. Also, the wares and
services in your logo application may not have included services
related to a website.
If you want to have proper protection in the logo and the
favicon, a separate application for the favicon is recommended.
There is also an advantage to apply for such a trademark now,
rather than later. Notice that the Google favicon trademark made a
colour claim as well. As set out in my other recent article
"Nice and "Use"-less: Major Changes to
the Trade-marks Act", if you are interested in claiming
colour for a trademark, you would be well-advised to make your
application before the revisions to the Canadian Trade-marks
Act come into force next year.
With a company's internet presence being of paramount
importance, the favicon, just like the company's trademarked
logo, can portray the attributes of the company's services,
goods and reputation to which people identify. As such, while some
may view it as an afterthought, especially where one has already
registered a trademark, one should be mindful to take steps that
can and should be taken to protect these tiny logos. They may yet
become the image that people who surf the internet most associate
with a company's brand, or at least its website.
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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