May 15th, 1997
Terrance S. Carter, B.A., LL.B.©
A. EXECUTIVE SUMMARY - KEY POINTS TO REMEMBER
1. Trade-Marks Are An Essential Asset Of A Charity.
2. Trade-Marks Can Be Lost If They Are Not Properly Protected.
3. Need To Be Pro-Active In Protecting Trade-Marks Or Risk Losing Trade-Mark Rights By Default.
4. Registration Of A Corporate Name Or A Business Name (Trade Names) Does Not By Itself Give Trade-Mark Protection.
5. Trade-Mark Rights Exist At Common Law But Those Rights Should Be Protected By Trade-Mark Registration Under The Trade-marks Act.
6. There Is Enhanced Trade-Mark Protection Available For Charities As "Public Authorities" Under Section 9 Of The Trade-marks Act For "Official Marks".
7. Separate Trade-Mark Registration Must Be Done In Each Country In Which The Charity Is Operating.
8. Essential To Properly Use And License Trade-Marks.
9. An Infringement Of A Trade-Mark By Others, Even If Done Unintentionally, Must Be Immediately Curtailed.
10. Board Members And Executive Staff Of A Charity Need To Be Informed Of The Importance Of Trade-Mark Rights.
11. A Charity Should Obtain A Domain Name As Soon As Possible Using Its Trade-Mark As Part Of The Domain Name Together With Obtaining A Trade-Mark Registration.
B. WHAT IS A TRADE-MARK?
1. The Basic Nature Of A Trade-Mark.
(a) a trade-mark is any mark used for the purpose of distinguishing wares or services manufactured, sold, leased, hired or performed from those of others;
(b) a trade-mark represents the goodwill of a charity;
(c) trade-marks are recognized and protected at common law but receive additional protection by registration under the Trade-marks Act.
2. What Do Trade-Marks Consist Of?
(a) a single word, i.e.,
"Lego"
(b) a combination of words, i.e.,
"Miss Clairol"
(c) a logo or symbol, i.e.,
the big "M" for McDonalds
(d) a slogan, i.e.,
"you deserve a break today"
(e) a package or container designs, i.e.,
"the Coca-Cola bottle"
(f) even a telephone number, i.e.,
"967-1111"
3. Examples Of Trade-Marks Involving Charities.
(a) corporate name, i.e.,
"ABC Relief Agency of Canada"
(b) the portion of a corporate name by which a charity is identified, i.e.,
"ABC Relief Agency" of ABC Relief Agency of Canada
(c) a Charity division, i.e.,
"ABC Children's Clubs", a division of ABC Relief Agency of Canada
(d) a logo, i.e.,
(e) emblems or crests, i.e.,
(f) a slogan, i.e.,
"Here's Life".
C. WHY ARE TRADE-MARKS IMPORTANT TO CHARITIES?
1. A Trade-Mark Is One Of The Most Valuable Assets Of A Christian Charity.
2. Trade-Marks Represent The Good Will Of A Charity By Providing A Focal Point For:
(a) donations from regular supporters;
(b) donations from estate gifts;
(c) enhancing the reputation of a charity;
(d) future expansion of charitable activities.
3. Trade-Marks Distinguish One Charity From Another And Develops Identification For Associated Charities.
4. Trade-Marks Have Present And Future Marketing Value In Relation To Books, Tapes, Videos, Televisions, Internet, Etc.
5. Trade-Marks Have Licensing Value In Other Countries And/Or With Local Chapters.
6. Trade-Marks Are Fragile Assets That Can Be Lost Or Seriously Eroded Through Both Error Of Commission And Omission.
7. Essential That Trade-Marks Be Used To Enhance And Protect Their Value Instead Of Diminish Their Value.
D. THE DIFFERENCES BETWEEN TRADE-MARKS AND TRADE NAMES
1. Trade Name Is The Name Under Which A Business Is Carried On.
(a) it is the corporate or business name of an entity as opposed to the trade-mark;
(b) a trade name and a trade-mark can be one and the same.
2. An Example Of A Trade Name Is "The Coca-Cola Company", Whereas "Coke" Is A Trade-Mark.
3. The Trade-marks Act Does Not Provide For Registration Of A Trade Name Unless It Is A Trade-Mark.
4. Instead Trade Names Are Registered:
(a) as corporate names under either Provincial or Federal incorporating legislation; or
(b) as business names under applicable Provincial legislation, i.e., the Ontario Business Name Act.
5. Registration Of A Trade Name As Either A Corporate Name Or A Business Name Is For Public Information Purposes.
6. Registration Of A Corporate Name Or Business Name Does Not Give Trade-Mark Protection.
7. An Owner Of A Trade Name Still Has Common Law Rights To The Trade Name Based Upon Entitlement To Restrain Others From "Passing Off" On The Goodwill Of A Trade Name.
(a) i.e., the owner of a trade-mark may attack an application for registration or registration of a trade-mark and/or restrain its use under a common law action of "passing off";
(b) i.e., an unregistered trade name may be used to expunge a trade-mark if used prior to the registered trade-mark and an expungement application is brought within five years of registration.
E. THE DISTINCTION BETWEEN TRADE-MARKS AND
OTHER INTELLECTUAL PROPERTY
1. Copyrights:
(a) copyright is the sole right to reproduce an original work of art, music, drama, literature, photographs, manuscripts, computer programs, etc.;
(b) you do not need to register a copyright, although it may be advisable to establish an official record;
(c) generally a copyright exists for the life of the author and 50 years thereafter;
(d) a copyright and a trade-mark may co-exist, i.e., a work of art which is a trade-mark, such as a logo.
2. Patents:
(a) a patent is a statutory protection given to an inventor to make, use and sell to others the invention that he or she has created;
(b) an invention is defined as any new and useful art, process, machine, manufacture, or composition of matter, or any new and useful improvement in any art, process, machine, manufacturer, or composition of matter;
(c) the "modified absolute novelty requirement" means that public disclosure by the inventor of the invention for more than twelve months will barr obtaining a valid patent;
(d) patent protection extends for up to 20 years from the date the application is first filed.
3. Industrial Design
(a) provides an exclusive right to apply an ornamental design to an article of manufacture, such as a shape of a bottle;
(b) rights are limited to the ornamental appearance of an article of manufacturer;
(c) unless industrial design is registered, there can be no legal claim to ownership;
(d) registration gives exclusive rights for up to 10 years and no legal protection available.
4. Trade Secrets
(a) a trade secret is a common law protection arising out of a fiduciary obligation to act in good faith;
(b) information that is secret to the owner that can be used in the operation of a business or other enterprise;
(c) the secret is protected only to the extent that it is kept secret;
(d) i.e., the recipe for the coca-cola soft drink is a trade secret.
5. Registered Topography (Micro-Chips)
(a) provides exclusive rights to reproduce and manufacture the topography (i.e., three dimensional configuration) of integrated circuits, i.e., computer chips;
(b) there are no rights unless topography is registered;
(c) application must be filed within 2 years of first commercial exploitation of the topography.
F. HOW TRADE-MARKS BECOME WASTING ASSETS FOR CHARITIES
1. Confusion With Pre-Existing Trade-Marks Or Trade Names.
2. Failure To Restrain Unauthorized Use Of Trade-Marks Resulting In Loss Of Distinctiveness Through:
(a) similar corporate names;
(b) similar charity names;
(c) similar logos; and
(d) similar domain names on the Internet.
3. Confusion In Names Involving Estate Gifts.
4. Failure To Properly Control Licensing Of A Trade-Mark.
5. Abandonment Through Lack Of Use.
6. Limitation On Trade-Mark Rights As A Result Of Trade-Mark Registration By Others.
7. Dilution Of Trade-Mark Through Inconsistent Use Or Different Application.
G. TRADE-MARK PROTECTION AT THE COMMON LAW
1. Common Law Provides Protection To Restrain A Competitor From Passing Off It's Goods Or Services Under The Trade-Mark Of Another.
2. The Cause Of Action At Common Law Is Called A "Passing Off" Action.
3. Common Law Protection Of A Trade-Mark Does Not Require That The Trade-Mark Be Registered.
4. However, Trade-Mark Rights At Common Law Are More Difficult To Establish Before A Court And To Enforce.
H. THE ADVANTAGES OF TRADE-MARK REGISTRATION
1. Trade-Mark Registration Provides A Presumption Of A Valid Trade-Mark.
(a) establishes legal title to trade-marks similar to the registration of a deed for real property;
(b) a court will presume the validity of a registered trade-mark;
(c) at common law, the validity of a trade-mark must be established before a court will enforce it.
2. Trade-Mark Registration Is Effective Throughout Canada.
(a) registration is effective even if the trade-mark has only a local geographic exposure;
(b) at common law, though, the trade-mark is limited to enforcement in the local area of exposure only.
3. Trade-Mark Registration Permits Enforcement Across Canada.
(a) either in the Federal Court of Canada or Provincial Superior Court;
(b) at common law, the owner must initiate a passing off action in Provincial Superior Courts which is more difficult, lengthy, and costly to enforce.
4. Trade-Mark Registration Provides The Exclusive Right To Use The Trade-Mark With Respect To Its Goods Or Services.
(a) exclusive right to use the trade-mark in association with its goods and services;
(b) in effect for fifteen years;
(c) is renewable every fifteen years thereafter.
5. Trade-Mark Registration Gives Public Notice Of The Trade-Mark.
(a) will appear in subsequent trade-mark searches;
(b) will appear in corporate and business name searches;
(c) will deter others from using the trade-mark.
6. A Trade-Mark Registration Can Become Incontestable In Some Situations.
(a) a registered trade-mark cannot be contested after five years based upon a claim of prior usage even if there is an unregistered trade-mark with an earlier date of use;
(b) no such similar benefit extends to an unregistered trade-mark at common law.
7. Failure To Obtain Trade-Mark Registration May Result In A Limitation Of Trade-Mark Rights.
(a) if another party obtains a registered trade-mark, then after 5 years it will become incontestable based upon a claim of prior usage unless the owner of the registered trade-mark had knowledge of the unregistered trade-mark;
(b) this will result in the original trade-mark owner possibly facing a legal challenge to an expansion in usage of its unregistered trade-mark.
8. Trade-Mark Registration Can Assist In Protecting A Domain Name On The Internet.
(a) a domain name is harder to challenge if there is a trade-mark;
(b) the trade-mark registration should be identical to the second level domain name.
9. Trade-Mark Application In Canada Permits "Convention" Filing In Other "Convention" Countries.
(a) the filing date for a trade-mark application in Canada will permit the same filing date to be used in other "Convention" countries;
(b) application must be filed in other countries within 6 months of filing in Canada.
10. Trade-mark Registration Facilitates Obtaining Trade-Mark Registration In Other "Convention" Countries.
(a) a trade-mark registration facilitates a charity to apply for a trade-mark registration in other "Convention" countries.
(b) generally not available to a charity that has not registered its trade-mark.
I. THE ACQUISITION OF TRADE-MARK RIGHTS
1. A Trade-Mark Registration Confirms And Enhances Existing Trade-Mark Rights.
2. Registration Not Essential.
(a) a trade-mark registration is not essential to acquire rights in a trade-mark;
(b) an owner of a trade-mark has the right to prevent the subsequent use of a confusing trade-mark by another but only in the geographic area in which the goodwill has been established.
3. First Use Of A Trade-Mark Generally Establishes Priority.
(a) first person to use a trade-mark in Canada acquires the right to the trade-mark and is entitled to priority in registration;
(b) subject to earlier filing of proposed use of a trade-mark;
(c) there is no minimum length of time that a trade-mark must be used;
(d) trade-mark use must be continued and not abandoned.
J. BARRIERS TO TRADE-MARK REGISTRABILITY
1. A Trade-Mark Will Not Be Registerable If:
(a) it is a word that is "primarily merely the name or the sir name of an individual who is living or has died within the proceeding thirty years"
• i.e., "Smith" is not registerable because it is "primarily merely" a sir name
• but "Elder" may be registerable because there is another meaning beyond a sir name
• also can acquire distinctiveness through long term use
(b) it is a word that is "clearly descriptive or deceptively misdescriptive of the character or quality of the goods or services, the condition of or the persons employed in the production, or of their place of origin"
• i.e., "all silk" for silk fabric, or "sweet" for ice cream, are "clearly descriptive"
• i.e., "all silk" for non-silk fabrics is "deceptively misdescriptive"
• i.e., "Paris Fashion" indicates the place of origin
• the exception is where a secondary meaning has developed to overcome the descriptive or misdescriptive nature of the mark
(c) it is the name in any language of any of the goods and services in connection with it's use
• i.e., "Shredded Wheat" for cereal products
• i.e., "Holy Bible" for bibles
(d) it is confusing with a previously registered, applied for, or used trade-marks
• test is:
Ø whether the trade-mark looks or sounds alike or suggests a similar idea; and
Ø whether they are used to market similar wares or services
• there only needs to be a likelihood of such confusion
• the Trade-marks Office will consider:
Ø the distinctiveness of the trade-mark and the extent to which it has become known
Ø the length of time the trade-marks or trade names have been in use
Ø the nature of the wares, services or business
Ø the nature of the trade
Ø the degree of resemblance between the trade-mark or trade name in appearance, sound, or in the ideas suggested by them
(e) it is an Official Mark under Section 9 or 10 of the Trade-marks Act
• Section 9 are marks of public authority i.e., for which public notice has been given
Ø government marks or symbols
Ø coats of arms of the Royal Family, Armed Forces and the R.C.M.P
Ø emblems of the Red Cross, Red Crescent, United Nations
Ø universities or charities
• Section 10 prohibits the adoption of a mark which by ordinary and bona fide commercial use has become recognized in Canada designating the kind, quality, quantity, or origin of a trade-mark
Ø i.e., "Tweed Jackets"
K. THE SELECTION OF TRADE-MARKS FOR CHARITIES
1. Inherently Strong Marks.
(a) the strongest trade-marks are those that have no inherent meaning;
(b) i.e., coined words like "Xerox" or "Exxon";
(c) i.e., dictionary words that have no reference to the goods with which they are used in associated with, i.e., "Citizen" for watches.
2. Inherently Weak Marks.
(a) dictionary words that describe a characteristic or quality of goods;
(b) i.e., "super glue" for glue products;
(c) i.e., "Disciple Bible Studies" for bible study materials;
(d) many charities have descriptive names and may need to establish distinctiveness through long term use.
3. Suggestive Marks.
(a) not "clearly descriptive" but because the marks is suggestive of products are not considered to be inherently strong marks;
(b) i.e., "Shake and Bake" for chicken coating.
4. Compound Word Marks.
(a) the combination of a distinctive word with a descriptive word;
(b) i.e., "Coca-Cola", with "Coca" being distinctive and "Cola" being descriptive.
5. Marks That Have Acquired A Secondary Meaning.
(a) a weak trade-mark can through length of usage become a distinctive trade-mark;
(b) i.e., "Fridedaire" for fridges.
L. THE IMPORTANCE OF CONDUCTING TRADE-MARK SEARCHES
1. When To Do A Trade-Mark Search
(a) for existing unregistered trade-marks before proceeding to trade-mark registration;
(b) for future trade-marks or logos;
(c) for future corporate names or amended corporate names;
(d) for future operating names of a charity;
(e) for Internet domain names;
(f) for charities that are licensing its name.
2. Why Conduct A Trade-Mark Search?
(a) to determine the strength of an existing unregistered trade-mark;
(b) to determine if there are any pre-existing trade-marks that are confusing and should either be avoided or challenged (within 5 years);
(c) to determine the extent of future wares and services left open for expansion of trade-mark registration;
(d) to avoid trade-mark infringement and potential lawsuits.
3. Types Of Trade-Mark Searches.
(a) Trade-marks Office for registered trade-marks
• manual search of Trade-marks Register in the Trade-marks Office
• computerized search of trade-mark records
(b) Trade names and common law searches:
• unregistered trade names are entitled to trade-mark protection and may bar trade-mark registration
• corporate NUANS searches (newly updated automatic name search)
• business name searches
• trade journals
• yellow pages
• Internet Domain Name Search
• Revenue Canada Charities Division lift of registered charities
4. The Trade-Mark Registrability Opinion.
(a) trade-mark opinion should state whether the trade-mark is registerable as a Canadian trade-mark;
(b) the opinion should state whether the client is free to adopt the name and use as a trade-mark in Canada.
5. Expunging Competing Trade-Marks.
(a) expungement based upon non-use
• if they are competing registered trade-marks, Section 45 of the Trade-marks Act can be relied upon to require the Registrar of Trade-marks to send notice to the owner of the competing trade-mark to produce evidence that the trade-mark has been used in the last three years
• failure to produce such evidence will result in the registered trade-mark being expunged.
(b) expungement based on earlier use
• if an unregistered trade-mark was in use prior to the registration of a competing trade-mark, then the owner can apply to have the registered trade-mark expunged
• can only bring application for expungement based upon earlier use if brought within five years of the date of trade-mark registration
M. TYPES OF TRADE-MARK APPLICATIONS
1. Ordinary Trade-Marks.
(a) a basic trade-mark application will include a word, a series of words, a picture, a design, or a combination of design, picture and words;
(b) used in conjunction with a list of existing or proposed wares and services.
2. Distinguishing Guise.
(a) a distinguishing guise registration protects the unique shape of an item or its container or a mode of wrapping or packaging of goods;
(b) i.e., the shape of a coca-cola bottle;
(c) i.e., an audio tape enclosed case in the shape of a book or other product.
3. Certification Mark.
(a) a certification mark is a mark that the owner licenses to others to use as an indication of having met a defined standard;
(b) the owner of the certification mark cannot use the certification mark itself;
(c) ie., the "Good Housekeeping Seal of Approval", the Canadian Standard Association "CSA" logo, and the Wool Bureau's "Wool" design;
(d) certification marks were previously used to avoid Registered User Agreements;
(e) certification marks are less popular now since licensing of trade-marks no longer require Registered User Agreements.
N. THE BASIS FOR OBTAINING ORDINARY TRADE-MARK REGISTRATION
1. Use In Canada.
(a) trade-mark for wares (goods) can be registered based by use in Canada if it was used:
• at the time of the transfer of property and possession of the wares; and
• in the normal course of trade; and
• if the trade-mark is marked on the wares or on packages
(b) trade-mark for service can be registered based on use if:
• it is used and displayed in the performance or advertising of those services
(c) trade-mark must be used to remain valid
(d) the priority date for registration is the date of first use
• if use is recent, then the priority date will be shown as a date, month and year i.e., January 1st, 1996
• if priority use was many years before then the priority date will be only a month or even a year, i.e., 1943 (presumed to be December 31st, 1943)
2. Proposed Use.
(a) can file a trade-mark application based on proposed use before any use has taken place for either a ware or service;
(b) this allows the future reservation of a trade-mark for a specific ware or service;
(c) use must take place subsequent to filing and before the application can issue to registration;
(d) the priority date is the date of filing not the date of first use.
3. Registration In Foreign Countries.
(a) registration abroad permits an application to be filed based upon use and registration in a foreign country without the requirement of any use in Canada;
(b) If the foreign registration is an international "Convention" country, the applicant will be entitled to priority in Canada as of the date of filing in the other "Convention" country if the application is filed within 6 months of the foregoing registration.
4. Making Known In Canada.
(a) an application can be filed based upon "making known in Canada";
(b) the trade-mark must be used in another international "Convention" country and in association with the wares and services not yet used in Canada;
(c) extremely difficult to obtain since must establish "notoriety" of use in Canada;
(d) wares must be distributed within Canada; or
(e) wares and services must be advertised in:
• printed publications in Canada; or
• radio/T.V. broadcasting in Canada
5. Combination Application.
(a) a trade-mark application is not limited to any one type of application;
(b) a single trade-mark application can combine more than one type of trade-mark application.
O. FILING AND PROSECUTING TRADE-MARK APPLICATIONS
1. What Does A Trade-Mark Application Cover?
(a) a separate application must be filed for each trade-mark;
(b) one trade-mark application can cover both wares and services.
2. Basis Of Application Or As A Combination.
(a) existing use;
(b) proposed use;
(c) use and registration abroad;
(d) making known in Canada.
3. When To File The Trade-Mark Application.
(a) as soon as the decision is made to obtain the protection of a trade-mark registration;
(b) some situations require more immediate attention
• proposed with the priority date as the date of filing instead of date of use
• six month earlier priority date are available for registration in other "Convention" countries
4. The Contents Of A Trade-Mark Application.
(a) the applicant's full legal name and address;
(b) the names of any predecessors in title;
(c) the basis or bases for the application;
(d) the statement in "ordinary commercial terms" of the wares and services that the trade-mark has been or will be used;
• examples of wares - t-shirts, baseball caps, running shoes
• examples of services - dry cleaning services, television repair services, retail sale of bibles
(d) drawings where the mark includes a picture or specimen;
(e) a colour claim or design mark;
(f) a statement that the applicant is satisfied that he is entitled to use a trade-mark in Canada in association with the wares and services described in the application;
(g) the signature of an applicant or of it's agent;
(h) filing fee.
5. Amendments To A Trade-Mark Application.
(a) amendments to trade-mark application are limited;
(b) care should be taken to actively set out the following items since permitted amendments after filing will be very difficult;
• trade-mark itself if it alters its distinctive character
• the name of the applicant
• the enlargement of the statement of wares and/or services
(c) date of first use can be amended to a later date or it can be amended to an earlier date with production of satisfactory evidence.
6. Issuance Of Filing Receipt From Trade-marks Office.
(a) a serial number is assigned by the Trade-marks Office;
(b) a filing date is assigned.
7. Examination By The Trade-marks Office.
(a) trade-mark office will examine for:
• entitlement of registration
• compliance with a formal requirements
(b) trade-mark office will conduct a search of the trade-mark register for confusing or similar trade-marks
(c) trade-mark office will notify the applicant of approval or objections
(d) objections can be based upon
• trade-mark is confusing with an existing mark
• trade-mark must be described with ordinary commercial term
• trade-mark is "clearly descriptive" or "deceptively misdescriptive"
• trade-mark requires a disclaimer of a word or words
8. Advertisement In The Trade-Marks Journal.
(a) after response from the Trade-marks Office has been received and objections complied with, notification of advertising Trade-marks Journal will be issued;
(b) Trade-marks Journal is published every week;
(c) any third party can file an opposition to the registration of a trade-mark within two months of the date of publication.
9. Allowance Of A Trade-Mark.
(a) with no opposition a notice of allowance will be issued;
(b) six months to pay registration fee of $200.00 and provide declaration of use;
(c) can extend time for filing and declaration of use;
(d) a certificate of registration will be issued.
10. After Trade-Mark Registration.
(a) trade-mark registration is valid for fifteen years;
(b) trade-mark must be renewed at the end of fifteen years;
(c) trade-mark agent will remind owner of fifteen year expiry date;
(d) must keep trade-mark agent advised of change of address or change of name.
P. THE IMPORTANCE OF FOREIGN TRADE-MARK REGISTRATION
1. Each Country Requires Separate Trade-Mark Registration.
2. Member Countries To International "Convention" Can Claim Priority Date As The Filing Date Of A Trade-Mark In Another "Convention" Country.
3. Using Priority Dates In Foreign Countries Can Be Important In Relation To Proposed Use For A Trade-Mark.
4. Need To Retain Trade-Mark Agent In Foreign Jurisdictions And Obtain A Trade-Mark Registrability Search.
5. In The United States:
(a) trade-mark registrations are done in accordance with a "class" system for each ware or service;
(b) each class requires a separate trade-mark registration;
(c) due to the proximately of the United States, U.S. trade-mark registration is an important consideration;
(d) consideration should be given to obtaining a comprehensive common law search.
Q. EXTRA PROTECTION AVAILABLE FOR CHARITIES WITH A
SECTION 9 "OFFICIAL MARK"
1. What Is A Section 9 Official Mark?
(a) Section 9(1)(n)(iii) of the Trade-marks Act prohibits anyone from using an Official Mark in association with any wares or services in Canada;
(b) public notice is given through the filing and advertisement of the Official Mark in the Trade-marks Journal;
(c) examples of organizations that have had Section 9 Official Marks published:
• The Canadian Olympic Association;
• The Ontario Minor Hockey Association;
• The Alzheimer's Society of Canada;
• Canadian Baptist Ministries;
• Anne of Green Gables Licensing Authority;
• Ontario Society for Crippled Children;
• The Hutterian Bretheran Church; and
• The Canadian Canoe Museum.
2. The Advantages Of A Section 9 Official Mark.
(a) the test for a Section 9 Mark does not require a comparison of goods or services as is necessary under a test for a registered trade-mark, although test is narrowly applied;
(b) a Section 9 Mark allows the owner to prohibit anyone else using the mark for any wares or services although it does not allow for a claim of damages;
(c) the cost of a Section 9 Notice is approximately 50% less expensive than a trade-mark application;
(d) there are no detailed examinations of a Section 9 Notice other than confirmation that the applicant is a public authority, whereas trade-mark application must be prosecuted and objections answered;
(e) there are no renewal fees for Section 9 Notices and no procedures to expunge, whereas a trade-mark registration is limited to fifteen years and can be expunged;
(f) a Section 9 Mark can be indirectly licensed similar to a registered trade-mark by consenting to its use.
3. What Constitutes A Public Authority
(a) public authority is not defined in the Trade-marks Act;
(b) no rigid test has been established;
(c) case law has determined only that:
• the entity be non-profit
• that there be the existence of a public benefit
• there be some degree of government control
• there must be some degree of government financial support shown
(d) government control can be established by:
• incorporation as a special act non-profit corporation or a general act non-profit corporation; and
• evidence of control such as Revenue Canada under the Income Tax Act of Canada or the Public Guardian and Trustees Act under the Charities Accounting Act in Ontario, or other similar Provincial legislations establishing control of charities
(e) government financial support can be shown by virtue of the grant of charitable status from Revenue Canada.
4. Possible Changes To Section 9.
(a) Section 9 Notices have become widely used in the last decade;
(b) Section 9 Notices may be subject to statutory changes or limitations to restrict their use;
(c) prudent to obtain a Section 9 Official Mark protection now while it is still available.
5. Section 9 Official Mark v. Regular Trade-Mark Application.
(a) if charity has a limited budget, choose a Section 9 Official Mark first;
(b) but still need to obtain a trade-mark registration for:
(i) Internet domain name protection
(ii) not retroactively effective, i.e., no date of first usage
R. ASSIGNMENT OF TRADE-MARKS
1. Both Registered And Unregistered Trade-Marks Are A Type Of Property.
2. The Rights In The Trade-Mark Can Be Sold Or Transferred.
3. The Transfer Of Trade-Mark Rights Is Done By Means Of An Assignment Agreement.
4. For A Registered Trade-Mark, It Is Essential To Notify The Trade-marks Office Of An Assignment Of Trade-Mark Rights.
S. TURF WAR IN "CYBERSPACE", TRADE-MARKS AND
INTERNET DOMAIN NAMES
1. A Domain Name Is The Numeric Electronic Address Used To Locate A Computer On The Internet.
2. There Are Two Parts To A Domain Name.
(a) top level, i.e., generic designation i.e., .com and .org or regional designation of .ca or .us;
(b) second level is 26 letters to identify the organization.
3. There Are A Limited Number Of Internet Domain Names Available.
(a) i.e., only one "microsoft.com" or "redcross.org";
(b) seven new top level designations are being introduced to reduce competition for names.
4. A Charity Should Obtain An Internet Domain Name As Soon As Possible Using Its Key Trade-Mark.
5. If Internet Domain Name Is Not Available In One Form, i.e., "Newlife.Org", Then There May Be Other Alternatives Available, i.e., "Newlife.Com", "Newlife.Edu" Or "Newlife.Ca".
6. Consider Obtaining More Than One Domain Name.
7. Before Obtaining An Internet Domain Name It Is Advisable To Obtain A Trade-Mark Search To Avoid Trade-Mark Infringement.
(a) in Canada;
(b) possible in other jurisdictions including the U.S.
8. Conflicts Occur Between Domain Names and Trade-Marks.
(a) trade-marks are national in scope, whereas domain names are international in nature and transcend national boarders and national trade-mark law;
(b) trade-marks in most countries are acquired by establishing entitlement based upon a claim of "first to use", whereas domain names are acquired on a "first to file" basis;
(c) trade-marks are restricted to a specific list of wares and services, whereas domain names have no restrictions concerning their application; and
(d) trade-mark law is based upon multiple people using the same mark simultaneously, whereas there is only one owner of a particular domain name on a worldwide basis.
9. An Internet Domain Name Is Regulated By The Internic Domain Name Dispute Policy Effective As Of September Of 1996 As Well As By Trade-Mark Infringement Rules.
10. Need To Protect And Insulate Internet Domain Name By Obtaining A Trade-Mark Registration Either In Canada Or In Some Other Jurisdiction Before A Challenge Is Made To The Domain Name.
(a) trade-mark registration in Canada is preferred;
(b) "first to file" foreign trade-mark registration may be necessary in the short term; and
(c) a Section 9 Official Mark is not sufficient.
11. A Challenge Can Be Made To An Existing Domain Name By Obtaining A Trade-Mark Registration With A Date Of First Usage Prior To The Activation Date Of The Existing Domain Name.
(a) but must wait until trade-mark registration is in place; and
(b) then give notice of challenge to other party and to Networks Solutions Inc.
T. THE IMPORTANCE OF TRADE-MARK LICENSING
1. When Is Trade-Mark Licensing Relevant?
(a) when a Canadian charity is setting up local chapter and wishes to maintain the ownership and control of a trade-mark;
(b) when a Canadian charity expands to other countries and wishes to maintain ownership and control of it's trade-marks;
(c) when a charity permits its trade-mark to be used in conjunction with a fundraising event conducted by others on behalf of the charity;
(d) when a foreign charity is sponsoring a new charity in Canada and wishes to retain the ownership and control of the trade-mark;
(e) when a charity permits other charities to use it's trade-mark as evidence of membership or standards be maintained, i.e., like the "Canadian Centre for Philanthropy".
2. Licensing Requirements Prior To June 9th, 1993.
(a) licensing required the completion and filing of a Registered User Agreement;
(b) formalities of the Registered User Agreement was the primary focus as opposed to the substance of the relationship.
3. Licensing Requirements After June 9th, 1993.
(a) registered user agreements are no longer required;
(b) the courts will look more carefully at the substantive relationship as opposed to the form of the licensing agreement.
4. Current Licensing Requirements For Trade-Marks.
(a) there must be a licensing arrangement;
(b) the license arrangement should be in writing but not necessarily;
(c) license must be granted by the owner of the trade-mark;
(d) owner must obtain direct or indirect control of the character, quality and use of the trade-mark in association with wares or services;
(e) the Trade-marks Act deems the use of a licensee to be use of the owner.
5. Use And Enforcement Of The Trade-Mark License.
(a) marketing
• important to show that the user is a licensee
• i.e., "Help The Children" is a REG TM of "Help The Children International" and used under licence by "Help The Children Canada"
(b) enforcement
• licensee may call on owner to take proceeding to enforce protection of trade-mark
• licensee can establish evidence of use for a proposed use by licensor
6. General Licensing Considerations.
(a) quality control
• owner must set and monitor the standards for the trade-mark or appoint someone to act in it's behalf
(b) assignment and sub-license
• the licensee should be prohibited from assigning, transferring or sub-licensing the trade-mark
• the licensor will normally retain the right to assign its rights to other parties
(c) prescribe boundaries for licensed goods or services
• geographic area
• defined list of services and goods
(d) liability
• licensor should be liable for the registrability of the trade-mark
• licensee should be liable for misuse of the trade-mark
• licensor should maintain liability insurance for actions of the licensee
(e) termination of license agreement
• needs specific termination date for agreement
• plus right to terminate early in the event of breach of the agreement
(f) effect of termination of agreement
• licensee ceases to use the trade-mark
• licensee returns all items with trade-mark on it
• licensor and licensee will issue a joint statement
U. THE PROPER USE OF TRADE-MARKS
1. Proper Marking.
(a) prior to trade-mark registration use "Ô ";
(b) after the trade-mark registration use "®";
(c) identify ownership of trade-mark, i.e., "ABC Relief Agency is a Reg TM of ABC Relief Agency of Canada";
(d) use markings every time that a trade-mark is used
• on letterhead, publications, tapes, videos, advertisements, receipts, and solicitation
2. Identification Of License Arrangement.
(a) license arrangement must be shown on all markings;
(b) i.e., ABC Relief Agency *®;
* a Reg TM of ABC Relief Agency International used under license by ABC Relief Agency of Canada
3. Trade-Marks Should Be Distinctive.
(a) a trade-mark should be used in a manner to distinguish it from descriptive or generic words;
(b) this can be done by using
• distinctive type
• bold type
• capitalization
• prominent position on letterhead
4. Trade-Marks Should Be Used As An Adjective Not A Noun.
(a) always use trade-marks as an adjective even if the trade-mark is a noun
• i.e., "Band-Aid Bandages"
• i.e., "Jello Gelatine"
(b) when trade-marks are used as a noun they will become unforceable
• i.e., "Linoleum", "Zipper", "Escalator", or "Cellophane"
5. Trade-Marks May Need To Be Followed By Generic Name
(a) when a trade-mark is new or differs substantially from an existing one, it may be necessary to create or choose a suitable generic name to follow trade-mark;
(b) a generic name should be highly descriptive, relatively short, and easily pronounceable.
(c) i.e., "Copiers" in the phrase "Xerox Copiers".
6. Trade-Marks Should Avoid Plural Or Possessive Applications And Maintain Consistency In Use.
(a) never use a trade-mark in the plural form or as a possessive;
(b) i.e., "Coca-Cola's great taste";
(c) a trade-mark should be shown in a consistent manner.
8. Change Of Name Of Owner.
(a) all change of names of the registered owner must be shown on markings;
(b) all change of names of owners of registered trade-marks must be filed with the trade-marks office;
(c) failure to do so may result in the loss of trade-mark rights.
9. Importance Of Education Concerning Trade-Mark Use.
(a) education needs to be done in a consistent basis with
• the board of a charity
• the executive staff of a charity
• the staff involved in media and publications
V. PROTECTING THE TRADE-MARK
1. Ensure Parallel Registrations Of A Trade-Mark.
(a) incorporation with the name of a charity that includes the trade-mark;
(b) a trade-mark which is part of a trade name (i.e., business name) needs to be registered under Provincial legislation, i.e., Business Name Act of Ontario;
(c) a trade-mark needs to be registered under the Trade-marks Act;
(d) a trade-mark should be accompanying Public Notice under Section 9;
(e) registration of trade-marks in foreign jurisdictions should be considered.
2. Monitoring Infringement By Other Competing Trade-Marks.
(a) regular review of competing trade-marks in the Trade-marks Journal;
(b) regular review of trade journals, magazines, and newspapers;
(c) review of corporate and business name registrations;
(d) review of names in telephone books in major cities;
(e) regular review of Internet domain names;
(f) periodic review of names of registered charities with Revenue Canada.
3. Be Pro-Active In Stopping Infringement Of A Trade-Mark.
(a) give "polite but firm" first notice of infringement to offending party;
(b) if necessary obtain legal counsel to send formal letter of complaint of infringement;
(c) as an alternative, suggest establishing a licence agreement;
(d) then propose non-binding mediation ("ADR");
(e) if all else fails, then must proceed with litigation to protect the trade-mark or risk losing trade-mark rights.
4. Protecting An Unregistered Trade-Mark.
(a) protection under corporate law
• confusing corporate names can be forced to change
Ø under the Canada Corporations Act
Ø under Provincial Corporation Legislation
Ø under Provincial Business Name Legislation
• requires a complaint to the applicable government department
(b) expunging a competing registered trade-mark
Ø Section 45 Notice available to require evidence of use of competing trade-mark within last three years
Ø the Act permits expungement of a trade-mark within five years of registration if evidence can be shown of a prior use by an unregistered trade-mark
Ø expungement proceedings can be brought at any time where
* the offending mark was not registerable at the time of it's registration; or
* the trade-mark was not distinctive as of the date of institution of the legal proceedings
(c) "passing off" action at common law
• must prove ownership of the unregistered trade-mark
• passing off action is limited to local geographic area where trade-mark has been used
• passing off action is difficult to prosecute, is lengthy, and is expensive
5. Protection Under The Trade-marks Act For Registered Trade-Marks.
(a) infringement action available;
(b) infringement action can be brought in Federal court or in any Provincial court;
(c) do not need to establish ownership of trade-mark;
(d) is not restricted to immediate geographic area;
(e) alternative dispute resolution is a realistic option to an infringement action.
6. Ensure Usage Of The Trade-Mark.
(a) if a registered trade-mark is not used for three years then it is subject to expungement under Section 45.
7. Abandonment Under Common Law.
(a) to have a trade-mark abandoned at common law it is necessary to show not only the discontinuance of use but also an attention to abandon;
(b) abandonment means the loss of both registered and unregistered trade-mark rights.
W. CONCLUSION
1. Trade-Mark Rights Can Be Acquired And Lost Without A Charity Being Aware Of The Gain Or Loss Of Rights.
2. Charities Need To Recognize Trade-Mark Rights As A Valuable Property Asset.
3. Charities Should Become Pro-Active In Identifying Trade-Mark Rights And Protecting Them.
4. Trade-Mark Registration Provides The Best Means Of Securing Property Rights In A Trade-Mark.
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