I would like to continue the discussion concerning developing
effective brand management policies. This month I would like to
discuss records retention.
This is a difficult issue because many people do not think about
it in advance, but I have been involved in cases where multiple
brand names are an issue and the brand owner has had difficulty in
providing information about a specific brand since the relevant
information is only available for the multiple brands collectively.
Also, this type of problem can frequently be an issue in
oppositions and section 45 proceedings.
It is important for the brand owner and trademark counsel to
have retained records available concerning the brand name's
history, including the identity of the owner, the date of first use
together with dated examples of product packaging and
advertisements showing actual use. These records should be retained
in a systematic fashion for the life of the brand.
These records can be extremely valuable in the context of
oppositions, section 45 proceedings or trademark litigation. The
initial designs of labels and packaging can help establish claims
for copyright relating to such works. In addition, such evidence
can show the extent to which the brand name has become known which
will in turn affect the brand owner's ability to protect
Retained records should include the following representative,
dated material relating to the branded goods or services:
b) bills of lading and other shipping documents;
e) point of sale signage;
f) computer control labels;
h) invoices and other bills relating to the preparation and
reproduction of labels; and
i) other materials displaying the brand name.
Such material together with sales figures can provide the basic
evidence required in a trademark opposition, an action for
infringement or to show trademark use in a section 45
Demand letters and actions taken to preclude third parties from
using confusingly similar trademarks or trade names or otherwise
misusing the brand owner's intellectual property should also be
retained. This type of material can provide evidence that the brand
owner has diligently protected its rights.
This type of record keeping will be particularly important where
a trademark has been assigned since the trademark must become
distinctive of the new owner after the assignment. In such cases
the new owner must engage in a program to bring to the attention of
the relevant portion of the public that it is the owner of the mark
and the source of the goods or services. If the new owner maintains
appropriate records, they will help show that this has in fact
occurred. Records retention is also important if the trademarks
have been licensed.
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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