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Trademarks are the simple cornerstone of intellectual property protection

Written by  Charles Boulakia Tuesday, 01 June 2010 04:51
What kinds of protection are possible for your design? And how will you enforce that protection once you've got it?

There are four basic forms of intellectual property protection you can obtain for a new design - a patent, a trademark, an industrial design registration and a copyright. The type of intellectual property protection will depend on the type of design. In previous months, we’ve discussed patents and industrial designs. This month, we’ll tackle trademarks.


Trademarks are a great form of protection because they’re relatively cheap to get, certain rights are automatic on using the mark, and, most importantly from a business standpoint, unlike patents or industrial designs, you can obtain a trademark registration after you’ve started using the mark - so all those trademarks you’re using right now, and you didn’t bother registering, have likely not fallen into the public domain.


A trademark is a word, a design, a logo, a color, the shape of a product or the container it comes in, that is used to distinguish and identify the stuff or service you’re selling. A trademark registration provides legal title to that word, design, logo or shape. In short, it gives you the exclusive right to use the trademark, across Canada, in association with your wares or services.


To obtain a trademark registration, your mark must be distinctive from other marks that are out there. If the mark is a word or a phrase, it can’t be descriptive, or deceptively misdescriptive, of the wares or services you are selling.


Generally, the less meaning the mark has, the better the protection - “REALLY GOOD HOT DOGS” is not nearly as good a mark as “CHAMPION HOT DOGS.” First, it’s descriptive. Second, it’s probably not all that distinctive. Both these attributes make the mark a difficult one to register.


Even better than CHAMPION, from a trademark perspective, would be to call your hot dogs “DHLLGKJD.” It would be highly distinctive and non-descriptive, but kind of ridiculous. Until you think of the thousands of other seemingly meaningless (and probably, when they first started, completely ridiculous) marks that have gained acceptance in the marketplace, like “ebay”, “Lexus,” “Starbucks,” “Haagen Dasz,” “Keds,” “Lacoste” or “ASUS.” Or marks that have absolutely nothing to do with the product being sold, like “Apple,” “Sprite” or “infiniti.”


Industrial design is a key aspect of many trademarks. Simple designs, like the Nike “Swoosh” or the McDonald’s “golden arches” are some of the most valuable trademarks on the planet. If you see the design, you immediately know the product or service being offered, the quality of the goods, the type of good being offered for sale, etc. More complex designs are also often used and just as distinctive - think Starbucks or the Roberto Cavali crest.


A distinctive shape of a product, or the packaging it comes in, can also be protected - the classic example is the shape of a bottle of Coca-Cola - you don’t need to see the label to know it’s a bottle of coke - you can tell just from the shape, which is unique and distinctive. Ever wonder why there aren’t any other triangular chocolates? Toblerone (or rather, the owners of the trademark “Toblerone”) also own the trademark shape, for use in association with chocolate bars.


Trademarks are cheap to register - cheaper than patents, or even industrial designs. They last longer (forever, if you maintain the registration and continue using the mark). They’re generally easier to enforce (against a broader scope - anything confusingly similar). They’re also easier to enforce because people “get” them - it typically takes a whole lot less time and energy to explain to a competitor (or a judge) why the infringing mark is identical or confusing - as opposed to patent litigation, for example, where you have to explain your invention and every aspect of your claim.


All of this means that, from a business perspective, obtaining a trademark registration is a no-brainer - it’s something you should almost always do. Often. For every jurisdiction in which the branded product is sold. And for everything you can think of - every distinctive aspect that makes your product unique in the marketplace, from the color of the item (think “pink” insulation) to the shape of the cardboard cut-out display case it’s sold in.

This is the sixth article in a series that discusses real-world intellectual property issues for non-patent professionals. The series is meant to provide the business manager with some insight, context and useful tools for how to deal with patent-based issues on a business level. This article is not legal advice or opinion. Intellectual property issues are complex and often unique circumstances need to be considered. Consult your intellectual property professional before making any decisions based on the educational information provided below.


Charles Boulakia, M.Sc., MBA/LLP., is a patent attorney with the Toronto-based IP firm Ridout & Maybee LLP ( This e-mail address is being protected from spambots. You need JavaScript enabled to view it ).
www.ridoutmaybee.com


Click here for his previous blog.

Charles Boulakia

Charles Boulakia

Intellectual Property for Management online Columnist: Associate – Barristers & Solicitors, Ridout & Maybee LLP, his practice is principally directed towards the preparation and prosecution of patent applications.

Website: www.ridoutmaybee.com

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