Introduction to Intellectual Property
Intellectual property is a dynamic area of law that continues to be at the forefront of innovation, and continues to develop. Intellectual property is the legal right to ideas, inventions, and creations in the artistic, literary, industrial, and scientific fields. It also covers symbols, names, images, designs, and models used in business.
Intellectual property is distinguishable from physical property in that physical property is tangible whereas intellectual property does not have a physical presence and therefore cannot be touched or grasped.
The three most common types of intellectual property are: (1) copyrights; (2) trademarks; and (3) patents. This blog focuses on the law surrounding trademarks.
What is a trademark? A trademark can be one or many words, sounds, or designs used to distinguish the goods or services of one person or organization from those of others. As time passes, trademarks come to stand for not only the producer's actual goods or services, but also the producer's reputation.
There are three types of trademarks:
- An ordinary mark is made up of words, sounds, designs or a combination of these used to distinguish the goods or services of one person or organization from those of others. For example, suppose you start a technology company centred on fitness, and you call it SixPack Technologies, you could register these words as a trademark if you meet all the legal requirements for the services that you offer.
- A certification mark can be licensed to many people or companies for the purpose of showing that certain goods or services meet a defined standard. For example, the Kellogg's design, owned by the Kellogg Company, and licensed to Kellogg Canada Inc., is used on cereal and other goods.
- A distinguishing guise is about the shape of goods or their containers, or a way of wrapping or packaging goods that shows they have been made by a specific individual or firm. For example, if you manufacture S-shaped granola bars, you could register the S-shape as a distinguishing guise.
To register, or not to register? A registered trademark is a trademark that has been reviewed, accepted, and entered in the Register of Trademarks. The application process may or may not be difficult, depending on the trademark in question. Registration is direct evidence that you own the trademark.
For those who have yet to register their trademark, all is not lost. In Canada, owners of unregistered trademarks still enjoy certain rights and protections, albeit to a lesser degree. The owner of an unregistered trademark simply has to publically use the trademark for a certain length of time. These rights, however, are limited to the geographic area where the trademark has been used. Also, a legal dispute involving ownership of an unregistered trademark would likely be long, complicated, and expensive.
- On the other hand, there are
five reasons why you should register your
1. It proves that the trademark is yours.
- It gives you exclusive rights to use the trademark across Canada for 15 years (which you can indefinitely).
- It stops others from using a confusingly similar trademark.
- It allows you to flag infringements by others.
- It helps you license your trademark, which you can use to make money and increase your brand's popularity.
What trademarks are not registrable? Generally, a person cannot register the following marks:
- names and surnames (i.e. John Doe)
- clearly descriptive marks (i.e. "sweet" for chocolate)
- deceptive marks (i.e. "sugar sweet" for candy sweetened with artificial sweetener)
- words that represent a geographical location commonly known to be the place of origin of such goods or services (i.e. "Italy" for pizza)
- words in other languages (i.e. "cioccolato", which is Italian for "chocolate")
- words or designs that could be confused with a registered trademark or pending trademark
- words or designs that look very similar to a prohibited mark (i.e. the Canadian flag)
Registered Trademark + Recognizable Trademark = Endless Possibilities
A classic example of an incredibly powerful trademark is "Nike" and its very impressive "swoosh" trademark, since it doesn't contain letters and is still recognized all over the world.
Nike has registered the "swoosh" trademark and therefore has a strong legal right to prevent others from using a similar trademark in the same industries. Nike's concern is that a similar trademark could confuse consumers into thinking that the infringing company is in fact Nike, which could both enrich the infringing company and compromise Nike's strong reputation. When considering that it has taken Nike nearly 60 years to build a brand that some would consider synonymous with sports, it is no surprise that Nike will spend millions of dollars in legal battles to protect its reputation and brand image.
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.