Below is an excerpt from John McKeown’s December 2015 Monthly IP Bulletin.
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 fulfilled.
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.
Trademark Use
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.
Renewals
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 forever.
These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.
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