New Year’s Trade-Mark Checkup
Every year, I recommend that businesses perform a “checkup” on their branding and advertising to ensure proper usage of their trademarks.
First, recall that even though a trademark may be registered, this alone does not ensure protection – a trademark must be used properly and consistently to ensure its survival and scope. For more information on how to use a trademark properly, see this post.
Second, what if your trade-marks, advertising, or logos don’t look exactly like what you originally started with 5, 10, or 20 years ago? With “design” trademarks or logos, this is entirely possible where new artwork is updated or re-started after old design templates are lost, or where marketing decisions affect the look and feel of the logo. An example of this was highlighted in the well-known decision of the Court in Promafil Canada Ltée v. Munsingwear Inc. (1992), 44 C.P.R. (3d) 59 (FCA). In that case, the long-standing use of a thin, fit penguin design on shirts was changed by marketing decision to a more robust “corpulent” penguin design. As a result, a challenger attempted to strike the “thin” penguin registration from the register of trademarks due to its non-use (this is possible under section 45 of the Trade-Marks Act… see my post on this here). However, the Court ruled that the deviation from the original design was not sufficient enough as to completely abandon the original trade-mark. With “word” trade-marks, the test is similar but extremely stringent as even a single letter or space could potentially alter the meaning of the trade-mark. It remains prudent, however, that if your trade-mark has changed, you should register the new one.
Thirdly, it may be possible that you are no longer using your originally registered trade-marks, or you have developed further trade-marks which are not registered. You should review these and seek registration for any trade-marks you now use.
For more information on trade-marks or if you would like a trade-mark “checkup”, contact me.