Executives often underestimate the value of their marketing
tools when assessing their company's worth. Indeed, the brand
under which a company's products or services are offered is
often overlooked by the company in favour of the products or
services themselves. This mindset can result in expensive mistakes
and lost opportunities, particularly in the context of asset
valuation, dealing with aggressive competitors, or even assessing
the return on an advertising campaign.
The worth of a trade-mark can be as high as the value its owner
places on it. A trade-mark can be a word, logo or design that
distinguishes your company's products or services from those of
your competitors. In addition, few people know that a trade-mark
can also be applied to a particular shape or mode of packaging your
products such that your customers recognize your products by simply
seeing them on the shelves, even if they can't read your name
on the label.
Trade-marks, when properly used and protected, can add
tremendous worth to your enterprise and can be both used as a
marketing tool which gives you an advantage over your competitors
and considered a valuable asset by your lending institution. In
fact, in addition to awarding you a monopoly on the use of the
trade-mark in relation to your products and/or services, a
trade-mark can generate income in the form of licensing revenues,
serve as collateral for securing loans, and be an important asset
when valuing a company for the purpose of a merger, acquisition or
The worth and level of protection of a trade-mark often depends
on how its owner has used it and whether it has been registered.
Indeed, a trade-mark need not be registered. For example, an
unregistered word or logo that has been used extensively in
relation to a particular set of products or services can function
as a trade-mark if the owner can prove the public uses the word or
logo to distinguish its products or services from those of others.
However, these unregistered trade-marks are often difficult to
enforce and/or value, because the owner must first prove the
trade-mark has reached the required level of distinctiveness, an
exercise that is often imperfect and expensive, particularly as a
survey to prove the public's knowledge of the trade-mark may be
On the other hand, the simple exercise of registering a
trade-mark with the Canadian Intellectual Property Office provides
numerous advantages that far outweigh the costs of registration,
which are quite low. The registration of a trade-mark in Canada
creates a presumption of validity of the trade-mark such that its
owner need not expend the time or resources in first proving the
public knowledge of the mark. In addition, a registered trade-mark
provides its owner with a Canada-wide monopoly on the use of the
trade-mark, or any confusingly similar trade-mark, in relation to
the wares (products) and services with which the mark has been
registered and used. An unregistered trade-mark only has value in
the territory in which it has been used; therefore, a Canada-wide
monopoly can rarely be enforced, which means the mark is devalued
compared to one with a nationwide ambit of protection. Other
statutory benefits of registration exist as well, all of which can
benefit an owner both in terms of stopping infringers, but also
indirectly in assessing and often increasing the monetary value of
the goodwill associated with the trade-mark in the preparation of
financial statements or otherwise.
In conclusion, do not underestimate the worth that a registered
trade-mark can add to your company's portfolio. We can help you
gauge the value of your marketing or branding initiatives by
assessing the distinctiveness of your existing or proposed
trademarks, and by advising you on the best registration strategies
to employ to maximize the future benefits to your company.
About Ogilvy Renault
Ogilvy Renault LLP is a full-service law firm with close to 450
lawyers and patent and trade-mark agents practicing in the areas of
business, litigation, intellectual property, and employment and
labour. Ogilvy Renault has offices in Montréal, Ottawa,
Québec, Toronto, and London (England), and serves some of
the largest and most successful corporations in Canada and in more
than 120 countries worldwide. Find out more at
Voted best law firm in Canada two years in a row.
2008 and 2009 International Legal Alliance Summit & Awards.
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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