Published on March 27, 2013
Posted in: Blog
One of the first things people typically do when they come up with a new product or business idea is pick a name. They may go even further and start planning a logo, packaging and marketing. Each of these elements can potentially be protected by trade-mark registrations. The question is, what types of trade-marks are worth applying for? For instance, does it make sense to trade-mark your logo, your name, or both?
Registering a trade-mark gives you the exclusive right to use that trade-mark in association with the goods and/or services described in your registration across Canada, even in regions of the country where your mark is not currently being used. It also puts everyone in Canada on notice that you are the owner of that trade-mark. For these reasons and more, it is generally advisable to register a trade-mark when you are using or are planning on using one.
There are many different types of trade-marks that can be registered, and a person can easily find themselves at a loss for what type of application to file. The basic approach, however, is simple: think about what you want to protect, and file accordingly. How do people identify your goods and services?
The Canadian Intellectual Property Office currently allows words, designs, sounds and three dimensional objects to be registered as trade-marks. In addition, the Trade-marks Act will soon be amended to allow for the registration of holograms, motion marks, and trade-marks applied in a particular position on a three-dimensional object.
There is also a curious beast known as the “distinguishing guise.” A distinguishing guise is essentially a shaping of goods or their containers, or a mode of wrapping or packaging goods. Examples are the distinctive shape of a bottle of Heinz ketchup (UCA001117) or the triangular shape of a Toblerone bar (TMA562648). These too can sometimes be registered as trade-marks.
Business and product names are easy. Suppose you decided to name your new brand of running shoes “Nike”. To protect this name you would simply register a trade-mark for the word NIKE. That would protect you from imitators marking their shoes with the word “Nike” as well. (For those interested, Nike International, Ltd.’s real trade-mark is TMA205933 in Canada.)
Logos can be straightforward too. Suppose the logo for your new shoe brand was a “swoosh” symbol like the following:
This swoosh symbol appears on the sides of all of your running shoes. In that case, you would simply register a trade-mark for the swoosh design, i.e. a design mark. That registration would prevent imitators from putting swoosh-like logos on their shoes. (Again, the swoosh logo is of course a registered trade-mark of Nike International, Ltd. TMA657404).
Things get complex when logos have words in them. Consider, for example, registered trade-mark TMDA010433, owned by Coca-Cola Ltd.:
Remember, this is a design mark, not a word mark. The trade-mark above does not protect the name “Coca-Cola.” Rather, it protects the style of text the designer used. It would, for example, prevent Pepsi from writing the words “Pepsi-Cola” in the same iconic typeface as the Coca-Cola logo.
To protect the name “Coca-Cola,” Coca-Cola Ltd. would need to register a second trade-mark for the words COCA-COLA. Otherwise, they leave open the possibility of someone using words similar to COCA-COLA and simply changing the design. Registering both the name and the logo precludes the possibility of imitators stealing either the typeface design or the underlying words. (Coca-Cola Co. does in fact own a registered trade-mark for the words COCA-COLA: TMDA055268).
Our advice for most of our clients is that if they have a distinctive name for their business or product, and it is otherwise registrable, then they should register it as a word mark. Additionally, if their logo has any sort of distinctive or interesting design element to it, then they should register their logo as a design mark as well.
If a logo is simply a name written out in text without any particularly distinctive design elements to it, then it probably is not registrable as a design mark. On the other hand, if the lettering is distinctive somehow, like the Coca-Cola trade-mark above, it may be worth registering. Or, if their name is not registrable for whatever reason as a word trade-mark, then it may be advisable to register the text as a logo just to get some level of protection.
An old axiom of intellectual property law is “if it’s worth copying, it’s worth protecting.” Consider which elements of your name, logo, packaging, etc. are worth copying. It may guide you towards what types of trade-marks you should register.