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title

A Tip to Save You Money in Protecting Your Brand

DATE

November 9, 2006

EXPERTISE

Trade-marks

On September 19, 2006, the Federal Court of Canada rendered a decision which will influence your document management policy. The two minutes you spend reading this bulletin will save you expense in the long run.

The context

Your brand is your image. No doubt your most important asset. In Canada, one way to strengthen your rights in your brand is to obtain a trade-mark registration from the Canadian Intellectual Property Office.

What will this give you?

1. Public notice of your rights: the Canadian Trade-Marks Office can object to other applications to register marks that it considers confusingly similar to yours.

2. Extension of your right across the country: a trade-mark registration covers the whole of Canada. In order to get this protection, you can file an application that is based either on your intention to use the mark or on your past use of your mark.

Our advice

Keep a sample of the evidence of use of your mark (and in particular, the first such use). Why? If your application is filed based on past use, you may need to produce evidence of use to justify your claimed date of first use. Community Credit Union Ltd. recently learned this lesson the hard way when its competitors, the Credit Union Central of Canada and the Community Savings Credit Union, were successful in opposing its application to register the mark COMMUNITY CREDIT UNION on the grounds that Community Credit Union did not have sufficient evidence to back up its November 1986 claimed date of first use. Had such evidence been available, the mark COMMUNITY CREDIT UNION might be registered today. For more on this recent decision of the Federal Court of Canada, see http://decisions.fct-cf.gc.ca/en/2006/2006fc1119/2006fc1119.html.

What should you keep?

The following documents which bear your mark:

for services: advertising, copies of invoices remitted to the purchaser at the time of the performance of the service;
for wares: packaging, point of sale material or copies of invoices remitted to the purchaser at the time of transfer of the wares.

At Ogilvy Renault, we provide practical advice tailored to the business client. Please do not hesitate to contact us should you need any assistance in registering or enforcing your trade-marks or for any other Intellectual Property matter.

Daniel S. Drapeau
Louis Gratton

The purpose of this document is to provide information as to developments in the law. It does not contain a full analysis of the law nor does it constitute an opinion of Ogilvy Renault LLP or any member of the firm on the points of law discussed.

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