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 "Favicons".

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.