Cognate's Trademark Blog

Article: Canada – Why it’s important to differentiate between a trademark and a registered trademark

One protects your business well outside just the commercial area of its operations.

It is difficult to overstate the importance of a trademark to a business in Canada

 

As the means by which the general public identifies goods and services, a trademark is an extremely valuable asset, and the protection of it is of paramount importance to maintaining brand strength reports the Canadian Financial Post.

 

http://business.financialpost.com/entrepreneur/why-its-important-to-differentiate-between-a-trademark-and-a-registered-trademark

Recently, it was reported that the iconic Saint John-based Moosehead Breweries had sued a craft brewery in Vermont on the basis that its “Hop ‘N Moose” trademark for beer (including a logo that features a silhouette of a moose) constitutes trademark infringement.

One of the hallmarks of trademark law is that no trademark should be permitted to be used if its co-existence with another similar or identical trademark will confuse the public into thinking the goods and services of both owners come from the same source. As a result, when starting a new business or a rebranding exercise, or rolling out a new product or service line, it is critical to search the Canadian Intellectual Property Office database to confirm whether the desired words and designs are available.

Many factors go into the legal determination of whether or not two trademarks are too confusingly similar, but chief among them is whether the average consumer in a hurry and on first impression — based on the overall nature of both trademarks — would get them confused. A fairly low threshold, indeed. For that reason, seeking trademarks that are as distinct as possible is always advisable. In fact, made-up or coined words are always afforded the broadest scope of trademark protection.

Many factors go into the legal determination of whether or not two trademarks are too confusingly similar, but chief among them is whether the average consumer in a hurry and on first impression would get them confused. A fairly low threshold, indeed

Those with registered trademarks receive a very wide latitude of protection at a federal level. This means that using a registered trademark in the course of operating a business serving customers in Toronto only, you should be able to successfully assert your rights against someone using a similar trademark in Vancouver, even though nobody in Vancouver may have ever heard of your business. That’s one of the biggest differences between using a registered trademark and an unregistered one.

Without the benefit of federal trademark registration, the ability to enforce your rights against others generally extends as far as the commercial area in which your trademark is known. That can be much more difficult to establish.

As a result, cross-border use of trademarks deserves special attention from any brand owner. While the Moosehead litigation is still pending, one of the factors the court will consider is how distinct the Moosehead trademark is in the United States in association with beer products. The more distinct it is, the stronger is Moosehead’s right to its sole use. What is more likely to win the day, though, is the fact that its trademarks were already used and registered in the United States.

More at http://business.financialpost.com/entrepreneur/why-its-important-to-differentiate-between-a-trademark-and-a-registered-trademark

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