A recent dispute over a peanut butter flavoured craft beer (produced locally in Bedford) provided an excellent example of the importance of searching the availability of your proposed brand before it is officially launched in your marketplace. Had the craft beer maker conducted some preliminary trademark availability searches, it might not have chosen the word SKIPPY to brand its Damn Skippy Peanut Butter Stout beer product.
The primary objective of a preliminary trademark availability search, also known as a “knock-out” search,is to discover registered or pending marks that would immediately present clear obstacles to successful registration or put your business at risk of being sued for infringement or receiving negative publicity. For example, a search disclosing an identical registered mark is a no brainer in terms of “knocking” it off your list of potential brands.
Secondly, a preliminary trademark availability searchcan generally assist you in avoiding the more significant cost of a full trademark availability search report.
A fundamental aspect of brand selection involves appropriate trademark and due diligence searches. Some of those online searches go beyond the government trademark registry, as potential conflicts may arise from identical trademarks that were never registered or from confusingly similar domain names that were previously registered.
These due diligence searches also help to prevent premature expenditures toward promotional campaigns that may lead nowhere or cause embarrassment. Therefore, although a search is not required by law in Canada, it is generally accepted that appropriate searching is a prudent and cost-effective investment. Depending upon the needs and resources of the business and its particular market circumstances, different brand searches may apply.
As well, if the trademark is also going to be used in Québec, a search may be advisable for the translated version or official language equivalent of the trademark. There is a risk that an English-language trademark could be an infringement of the equivalent French-language trademark covering the same goods or services.
Marketing versus Legal Issues
The use of trademarks in brand advertising or on packaging gives rise to a tension between legal and marketing priorities and necessitates a delicate balancing of notice to the consumer and aesthetic appearance considerations. Marketing considerations may conflict with, but should not override, legal considerations.
Brand experts strive for a trademark that is short, easy to remember, easy to read, and easy to pronounce. Its ability to be translated and to be used cross-culturally in the global marketplace is also an important factor. The temptation to ride on the coattails of a more famous brand must always be avoided.
Valuable Assets Deserve Protection
Brands and trademarks identify the goods or services of a particular business and can become extremely valuable assets. Accordingly, it becomes critical to ensure that trademarks are properly selected, registered, and policed to safeguard their inherent economic value.
A trademark can often become the most valuable form of intellectual property a business owns. In Canada, as in the U.S., by searching availability, by using the mark properly, and by policing its use on a consistent basis, the brand owner can indefinitely preserve the rights, reputation and goodwill associated with the trademark at relatively little cost.
A few years ago, the Supreme Court of Canada decided a trademark case about two retirement homes using the same MASTERPIECE brand. The main practical take-aways of that landmark decision are still very apt today:
- Always conduct trademark searches, particularly for unregistered trademarks and trade names, before filing a trademark application or commencing use of a mark;
- Always apply to register your trademark as early as possible in its life cycle; and
- Once your trademark is registered, regularly monitor the relevant marketplace for any registered or unregistered marks that may be potentially confusing or infringing.
If you would like more information about trademark searches and filing a trademark application, please contact our Trademark Agent, Marc Belliveau.