When an aesthetic nurse in Kitchener-Waterloo named her new business “Kraftwurk,” it was partly an homage to the region’s rich German heritage. But she likely did not realize it would also trigger a legal battle with the German electronic band of the same name.
“She had worked so hard for her business and chose that name so carefully, that she wanted to fight them” after the band Kraftwerk opposed the filing, says Richard Whissell, a partner and trademark agent at Perley-Robertson, Hill & McDougall LLP/s.r.l..
Kraftwerk (the band) eventually lost the opposition, largely because its trademark was not found to be so well-known that it transcended product lines. So what advice does Whissell, who represented the entrepreneurial nurse at the Trademarks Opposition Board, have for other business people considering registering or opposing a trademark?
What is intellectual property (IP)?
There are two basic forms of intellectual property (IP) in Canada: Patents and trademarks. While patents protect inventions and innovations, trademarks protect words, phrases, symbols, designs, or combinations of those that represent a business and its products.
Anyone can apply to register a new trademark, or search if their proposed trademark has already been registered, at the Canadian Intellectual Property Office (CIPO).
Canada is what Whissell calls a “first-to-file country,” meaning that the first person to file a trademark application is given priority even if someone else used it before; there are big benefits from being first to register a trademark. For one, your competitors can search CIPO’s Canadian Trademarks Database and see if the trademark is already registered—leaving them out of luck, barring a successful opposition filing.
Secondly, he says, “it gives you a right to use.” Having a registered trademark in good standing makes enforcement much easier “because your rights have been defined in your government issued registration certificate, and there is a presumption of validity,” adds Whissell, who works with a mix of Canadian and international clients.
Some trademarks are more vulnerable than others, however. Many trademarks are easier to defend for the same reason they are memorable to consumers: They are catchy, unique words that have little to do with the actual product. “Like Starbucks, for instance,” Whissell says. “It does not have the words ‘coffee’ or ‘java.’ It is a distinctive trademark.”
Why register your trademark?
Registering a trademark may not seem all that important, relatively speaking, for an entrepreneur launching a new product or service. Organizations that do not register their name often do not expect it to be used by someone else—or for that name to become synonymous with an activity or commonplace item.
But not registering a trademark can leave a business dangerously exposed:
- Not registering your trademark means someone else can register it, claim naming rights, and stop you from using the word(s) or image.
- Having a registered trademark demonstrates that a company takes its IP rights seriously, which is important if you are looking for a potential investor or buyer.
- In case of a dispute, the party without registration is required to demonstrate why their opponent’s registration should be invalidated.
While Whissell concedes there is plenty of grey area in Canadian trademark law, the bottom line is that the burden is squarely on organizations that have not registered their trademark—and as a first-to-file country, that burden can be significant.
Even companies that register their trademark but do not proactively enforce it can jeopardize their rights. “It is your responsibility to police your trademark,” says Whissell. “Not proactively enforcing your mark can be seen as a form of acquiescence.”
Even companies with wildly popular trademarks can become victims of their own success, because once a trademark is used in vernacular language, it also becomes vulnerable to what is known as trademark erosion.
“If you wait too long, it gets more and more difficult to actually police and enforce,” Whissell explains.
How to register a trademark in Canada
Registering a trademark in Canada is not difficult—especially when you have seasoned professionals like Whissell to help navigate the process. Here is how it works:
- The trademark agent will review your website and marketing materials to get a sense of your product or service. If the mark is too generic, it is likely not registerable.
- If there is a distinctive element to the proposed trademark, the agent will do a preliminary register search and will develop a statement of goods and services that represents the business. In some cases, a more detailed clearance search may be needed.
- After both parties agree on the statement’s wording, it gets filed with the CIPO.
- You will receive an examination report from CIPO explaining which formal requirements you need to deal with before your mark is registered, or why your application has been rejected. If rejected, arguments to counter the rejection can be submitted and can often result in the rejection being withdrawn.
- Once the application is approved, there is a two-month period during which a third party can oppose your application (published publicly in CIPO’s Trademarks Journal).
Although anyone can file an opposition, Whissell cautions that less than five per cent of trademark applications in Canada are opposed by a third party.
For the nurse who eventually won the battle against the band Kraftwerk, Whissell says it was time-consuming, but worth it.
“There was just no overlap or connection,” Whissell says, adding that that was why the nurse eventually won the opposition. “We had to file a lot of evidence and explain how we came to that trademark, and I believe the outcome was correct”.
