Many of the world's most successful businesses have gone through a rebranding exercise or have expanded into new ventures and opportunities under different identities. This is often done to increase marketability, modernize, and reshape consumer expectations. One of the more recent and memorable branding facelifts has been X, formerly known as Twitter. To position itself as an "everything app", the company changed its name and set its iconic blue bird free to make way for an understated black-and-white X logo. The well-known twitter.com domain name now redirects to X.com, and the bird logo at the company's headquarters in San Francisco has been replaced, leaving the name "Twitter" a thing of the past.
If your business is considering similar rebranding efforts under a new name or redesigned logo or expanding into a new industry under a separate identity, developing a legal rebranding strategy is a good way to assess the potential risks involved. This article discusses some legal considerations that could influence your business's rebranding strategy, as well as the potential consequences of eventually retiring your business's current name in Canada. However, as each business's needs are unique in the context of rebranding or expansion, businesses would be well-advised to consult a qualified lawyer or trademark agent.
How should I choose a new name for my business?
Businesses in the market for a new name should consider choosing one that is likely to be considered distinctive or unique. Certain types of names are generally regarded as weak and may not be registrable as trademarks, including names or surnames of individuals, descriptive or laudatory words or phrases such as THE BEST or NO.1, geographic names, or any combination of the foregoing. For more detailed discussions of the considerations to bear in mind when choosing a trademark, please see the first article in the series.
A business's plan to adopt a new name may be influenced by the availability of the corresponding domain name. Domains ending in ".com" are usually the most sought after but some Canadian businesses prioritize registering domain names with ".ca" extensions to better serve local clientele. If no desirable ".com" or ".ca" names matching your proposed name are available, you may decide to pursue a different name altogether, particularly if your business has or will rely on a significant online presence.
What should my business do before adopting a new name or logo design?
Whether your business plans to adopt a new name, tagline, or logo design, conducting clearance searches beforehand is strongly encouraged to locate possible obstacles to use and registration of the new name, tagline, or design in Canada. Failing to conduct a search could lead to serious consequences including a costly dispute with another person or business.
If your business is planning to adopt a redesigned or modernized logo and has hired a design firm or an independent graphic designer to create the logo, executing a written assignment of the copyright in the logo design to your business is strongly encouraged. The copyright in a logo design could otherwise belong to the creator, giving them exclusive rights to the logo's use, reproduction, and distribution.
Depending on the extent to which your business's new name or logo design differs from any names or designs for which your company has obtained a trademark registration, filing a trademark application before making any public announcement or disclosure can be also advantageous as it prevents trademark squatters or competitors from securing earlier filing rights after the announcement or disclosure has been made.
What about corporate names, business names, and domain names?
Your company's corporate name is the legal name registered through the incorporation process and is usually the name appearing on contracts and invoices. Your company's business name (or trade name) is any name under which your company carries on business publicly and is typically easy for people to remember. In Canada, business names must be registered in each province where your company carries on business. Rebranding to a different corporate or business name could mean amending these registrations if your company plans to change the name by which the public identifies the company itself.
While a corporate name, business name, or domain name could consist of or contain a trademark, merely registering or amending any of these types of names does not grant your company any trademark rights in respect of the name.
What should my business do before expanding into a new field of goods or services?
Even if your business is diversifying into an entirely new industry or field of goods or services under the same brand identity, conducting a clearance search in association with the new product or service offering can be helpful in identifying possible challenges associated with the expansion.
To protect the portfolio of new offerings under the same brand, statements of goods and services under existing trademark applications and registrations cannot be amended to add new goods or services. One potential strategy for maximizing protection for new suites of products or services is to file a new trademark application. Your business can also file an extension application for an existing trademark registration. These types of applications extend the statement of goods or services of a trademark registration but are examined as a new application. Once the registration of the extension application is issued, registrants need only manage one renewal date.
What happens when my business stops using its current name or trademark?
Stopping or abandoning the use of your business's name or logo could result in a loss of rights and expose any existing registrations to attack. There could also be a loss of goodwill, or reputation, over time.
There is no defined extent or duration of non-use that will result in a loss of reputation or full rights. The Courts in Canada have determined this question on a case-by-case basis, considering factors such as the inherent distinctiveness or uniqueness of the name at issue, the length of time of non-use, and the apparent intention of the business (e.g., a clear intention to adopt and use a new name).
Some brands and company names have continued to remain well-known to a sizeable segment of the population in Canada despite having largely fallen out of use for many years, including BLOCKBUSTER for video rental stores, DOMINION for grocery stores, and EATONS for department stores. Each of these brand names seemed to have acquired a strong reputation before falling out of use. For other brands, it can be difficult to prove that a business name still possesses residual goodwill after a significant period of non-use. As a result, it is important not to assume that your business is able to claim exclusive rights to a trademark if all use of the mark has ceased.
Moreover, if your business owns a trademark registration that was issued more than three years ago, failure to use the mark within the preceding three years could result in the registration being expunged or removed from the Register for non-use. For a more in-depth discussion of non-use cancellation proceedings, please see the third article in the series. Businesses can maintain a trademark registration indefinitely provided that there is bona fide, continuous use of the mark as registered in Canada and the renewal fees are paid. As a matter of long-term strategy, where marks or names have been replaced or phased out, continuing to use the phased-out name or mark to some extent would be worth considering to maintain registered rights. If the business later decides to resume use of the mark, the maintenance of the corresponding trademark registration could represent a considerable saving in costs.
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.
