TRADEMARKS IN BUSINESS
Trademarks
The trademark is the commercial identity of a product or service. It enables consumers to recognize it within competitors' wares and services and to identify its origins. Consumers may rely on the trademark as constant characteristics and quality of the product or service.
As for the owner, the trademark is a guarantee of its reputation and helps to built consumers loyalty.
The trademark may be made of :
• word(s), phrase, slogan (word mark);
• number(s) such as the telephone number of the company (numeral mark);
• design, logo (design mark);
• color;
• a two-dimensional object, such as superimposed letters on a label;
• a three-dimensional object, such as a miniature toy attached to a piece of clothing;
• the packaging, such as the Coca-cola® bottle, or the shape of the product, such as the form of the Toblerone® chocolate bar (distinguishing guises).
A mark may be composed of two or more, of the above elements.
The international IP community agrees that sounds and odors may qualify as trademarks. Sound marks are registrable with the US Trademarks Office for many years.
In North America, the mark must be in use to exist. An application to register the mark may be filed even if the mark is not yet used, but it must be in use within three years from the filing date in order that the Registrar issues the Certificate of Registration. Furthermore, registration of a mark may be removed if the owner has ceased using it. Finally, it is noteworthy that the owner of a non registered trademark may enforce his rights before the Courts in case of litigation for unauthorized use of his mark by third parties.
Protection and ownership recognition on a mark are usually done through specific federal trademark laws. Therefore, it is wrong to believe that the name is protected when registering a company with the Registraire des enterprises in Quebec, or when creating a federal or provincial company. These proceedings are not recognition of ownership in the name. Their purpose is to notify the public that an individual or a company is doing business under a chosen name or to identify a legal entity. The name will be searched before being granted to avoid confusion with another individual or legal entity business name. In case of potential confusion, minimum changes will be allowed to grant the name.
The purpose of the trademark is to give a commercial identity to a product or service in order to enable consumers to identify same within its competitors. Confusion consideration is stricter and often, a small change in the mark will not suffice to obviate risks of confusion. It is true that a business name may also work as a trademark. In such a case, it is highly recommended to register the business name as a trademark as well.
Registered trademarks represent a considerable business value and contribute to leverage the total value of the company.
Indeed, it is an ownership guarantee, which is vital for companies building their business relationship and development on IP assets. That is to say, franchisees will not buy a franchise unless ownership of the franchisor in the mark is confirmed through trademark registration. Many distributors will not put products on their shelves unless they are convinced that the manufacturer is the owner, or a duly authorized user of the mark. In these cases, franchisees and distributors are at risk of being sued, along with the pretended owner, if the latter has infringed third parties' rights.
The importance of registering trademarks also resides in the fact that this asset, as well as all other IP assets, is more and more recognized as a valuable asset of the company, like any other material asset. More and more banks recognize that taking IP assets in guarantee for a loan is feasible and secure. Furthermore, some organizations help research and development and innovation companies in obtaining loans by guaranteeing same in taking the IP assets as guarantee.
This is not a legal opinion. Please contact your IP specialist for a legal advice.
As for the owner, the trademark is a guarantee of its reputation and helps to built consumers loyalty.
The trademark may be made of :
• word(s), phrase, slogan (word mark);
• number(s) such as the telephone number of the company (numeral mark);
• design, logo (design mark);
• color;
• a two-dimensional object, such as superimposed letters on a label;
• a three-dimensional object, such as a miniature toy attached to a piece of clothing;
• the packaging, such as the Coca-cola® bottle, or the shape of the product, such as the form of the Toblerone® chocolate bar (distinguishing guises).
A mark may be composed of two or more, of the above elements.
The international IP community agrees that sounds and odors may qualify as trademarks. Sound marks are registrable with the US Trademarks Office for many years.
In North America, the mark must be in use to exist. An application to register the mark may be filed even if the mark is not yet used, but it must be in use within three years from the filing date in order that the Registrar issues the Certificate of Registration. Furthermore, registration of a mark may be removed if the owner has ceased using it. Finally, it is noteworthy that the owner of a non registered trademark may enforce his rights before the Courts in case of litigation for unauthorized use of his mark by third parties.
Protection and ownership recognition on a mark are usually done through specific federal trademark laws. Therefore, it is wrong to believe that the name is protected when registering a company with the Registraire des enterprises in Quebec, or when creating a federal or provincial company. These proceedings are not recognition of ownership in the name. Their purpose is to notify the public that an individual or a company is doing business under a chosen name or to identify a legal entity. The name will be searched before being granted to avoid confusion with another individual or legal entity business name. In case of potential confusion, minimum changes will be allowed to grant the name.
The purpose of the trademark is to give a commercial identity to a product or service in order to enable consumers to identify same within its competitors. Confusion consideration is stricter and often, a small change in the mark will not suffice to obviate risks of confusion. It is true that a business name may also work as a trademark. In such a case, it is highly recommended to register the business name as a trademark as well.
Registered trademarks represent a considerable business value and contribute to leverage the total value of the company.
Indeed, it is an ownership guarantee, which is vital for companies building their business relationship and development on IP assets. That is to say, franchisees will not buy a franchise unless ownership of the franchisor in the mark is confirmed through trademark registration. Many distributors will not put products on their shelves unless they are convinced that the manufacturer is the owner, or a duly authorized user of the mark. In these cases, franchisees and distributors are at risk of being sued, along with the pretended owner, if the latter has infringed third parties' rights.
The importance of registering trademarks also resides in the fact that this asset, as well as all other IP assets, is more and more recognized as a valuable asset of the company, like any other material asset. More and more banks recognize that taking IP assets in guarantee for a loan is feasible and secure. Furthermore, some organizations help research and development and innovation companies in obtaining loans by guaranteeing same in taking the IP assets as guarantee.
This is not a legal opinion. Please contact your IP specialist for a legal advice.