This month I would like to continue the discussion concerning
developing effective brand management policies.
Obtaining and Maintaining Trademark Registrations
Make the System Work for You
I trust that many people who follow these notes have at least a
basic understanding of how the trademark registration system works.
The key to taking advantage of the system is to understand it, so
it can be used to the maximum extent possible to protect the brand
name, domain names which function as a trademark, slogans, the
product and, in some cases, product packaging. This is best
achieved if a specific individual is designated as responsible for
compliance with the Trademarks Act and to coordinate with qualified
counsel. While brand managers may be busy with the strategic and
tactical responsibility for the brand, someone must be in charge
and responsible for ensuring that this compliance function is
In these times many people think carefully about incurring
expenditures but the bottom line is that trademarks and the
goodwill associated with them are typically among the most
signicant assets of most companies. Money paid to protect
trademarks is well spent.
Once use of the trademark commences, a review should be carried
out in association with qualified counsel to ensure that the mark
is actually being "used" within the meaning of the
Trade-marks Act. There are technical requirements relating to
"use" that need to be considered.
In Canada there is no necessity to file specimens to obtain a
renewal of an existing registration. Since the system does not
provide any built in requirements for monitoring whether the
registered trademark is being used in the form in which it was
registered or in association with the wares or services the
registration was obtained for, trademark owners should develop
systems to ensure that these matters are reviewed in a timely
fashion. It is also prudent to ensure that appropriate trademark
notices or legends are in use.
If significant variations are made in the presentation of the
trademark without taking the necessary steps to obtain trademark
registrations, the registration may be at risk of expungement since
the subject matter of the initial registration may be either
abandoned or unsupported by any use. In addition, the variant in
use may not be protected by a trademark registration and can only
be protected by the assertion of common law rights. In order to
avoid this type of situation, actual usage should be audited and
monitored on a pre-determined basis to ensure that the trademark
owner's rights are protected.
Systems should also be established to ensure that trademark
registrations are renewed in a timely fashion. A registration is
subject to renewal within a period of 15 years from the date of its
registration or last renewal (10 years under the recent amendments
to the Act but not yet in force). Unlike other intellectual
property rights a trademark registration may be renewed any number
of times without limitation or as they say: trademarks are
The Federal Court dismissed a motion by Apotex seeking particulars from Allergan's pleading relating to the prior art, inventive concept, promised utility and sound prediction of utility of the patents at issue.
Last year we saw the Canadian Courts release trademark decisions that granted a rare interlocutory injunction, issued jailed sentences for failure to comply with injunctive relief, grappled with trademark and internet issues...
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