Trade-marks

Disclaimer: The following is legal information, not legal advice. The following legal information is no substitute for sound legal advice from a lawyer or paralegal.

Brand Protection and Choosing a Trademark

Whether you aspire to produce widely popular or niche driven artistic works, it is never too early (or too late) to start protecting your “brand”. In today’s competitive economy, successful marketing can build an artist’s commercial reputation, and allow consumers to associate a brand with a particular level of quality and to distinguish one artist’s works from another’s. It should be no surprise that an artist’s brand can be their most valuable asset.

An individual or company can create and establish its brand through the creation of a trademark.

What is a trademark?
A trademark represents what is known as an exclusive “intellectual property” right and like any property right (think real estate), it gives the owner an exclusive interest in enjoying that property.

A trademark can be any word, slogan, logo, sign/symbol, design, colour applied to a surface, an internet address, or any combination thereof that is used to distinguish the goods or services of an individual or company. An example of goods or services may be artistic paintings or a particular brand of art restoration services. Upcoming legislative changes to Canadian trademark law will include an expanded definition of what constitutes a trademark and will include in that definition colour, figurative element, three-dimensional shape, hologram, moving image, mode of packaging goods, sound, scent, taste, texture and the positioning of sign.

How do I choose a trademark?
One of the most important parts of a trademark is that it must be distinctive of the source of the goods or services. If you are in the early stages of branding, consideration should be given to creating a trademark that is unique or distinctive, that is, a mark that is capable of distinguishing your goods and services from others. While marks can acquire distinctiveness through use over time, if you are just beginning branding it may be advantageous to consider what types of marks may be most distinctive from the start. Trademarks that consist of coined words (made-up words) or arbitrary associations are often quite distinctive of the source. For example, think of the well-known trademark Apple which is arbitrarily associated with computers.

What should I avoid in choosing a Trade-mark?
There really is no set rule dictating what you may choose to represent your brand, however, if you want to Register your Trade-mark with Canada’s Intellectual Property Office (the benefits of which are discussed in a later post) there are a few things to avoid.

The main objections to registering a trade-mark in Canada include:

  • A mark that may be recognized as the name or surname of a living individual or an individual that has died within the preceding thirty years (eg. Celine Dion’s for vocal training services)
  • A mark that clearly describes or misdescribes a character of the goods or services it is associated with, or the goods or services themselves (eg. The Best Hotel for hotel services)
  • A mark that is confusing with a registered trade-mark (eg. Starbucks vs. Starluck for coffee)
  • A mark that is the name in any language of the goods or services (eg. Pomme for apple juice)

While this list is not complete or definitive on what cannot be registered, it does include the most common objections faced in registering a trade-mark.

It should also be noted that a trade-mark that falls into the above two categories may be registered if it is already in use, and as a result it has acquired distinctiveness in the market place. Notably, this will require the applicant to prove that the mark is distinctive in order to get a trade-mark registration.

For further information, the Canadian Intellectual Property Office (CIPO) provides a useful resource on trade-marks.