Canada is taking the final steps to align its trademark system with the rest of the world.
This is mostly great news because it will make it much easier for Canadian businesses to protect their brands internationally. It will also allow brand owners outside of Canada to specify Canada in their international trademark applications. To learn more about deficiencies of Canada’s current trademarking regime, watch our cartoon: How Can Canadian Businesses Protect their Brands Internationally.
One downside of the change is that government fees for filing trademark applications in Canada are almost certain to go up. In many cases, significantly.
Canada is joining the Nice Convention, according to which all products and services are divided into 45 categories called “classes”. There are 34 classes of products and 11 classes of services.
Currently, Canadian government fees for filing a trademark application are CAD 450 per trademark, no matter how many goods and services your trademark application covers. In most other countries, government fees are calculated on a per class basis. For example, most U.S. trademark applications cost their owners USD $275—$375 in filing fees for each class of goods and services listed in the trademark application.
So if you want to protect your trademark for potato chips, crackers, packaging, baseball caps, online retail store featuring consumer products, and cafe and restaurant services (this, by the way, is a real-life example), you’re looking at a trademark application in 6 classes. If Canada adopts a fee of CAD 300 per class, the total fees will be CAD 1,500 per application compared to CAD 450.
Canada has already modified its website to add references to classes (which caused Canadian Intellectual Property Office’s website to be down several times over the past few days).
As of today, grouping goods and services into classes is still voluntary, but we are one step away from the announcement about new, per-class, government fees, at which point class specification will become mandatory. This is now a matter of weeks before filing fees will go up.
No specifics have been disclosed as to whether the new rules and fees will affect pending trademark applications but there is a good chance that if you file your trademark applications before new rules come into effect, you will not be required to pay for each class.
This is the reason so many business owners are under pressure to file their trademark applications sooner rather than later.
And if you have a brand you have been putting off trademarking in Canada, NOW is the time.
Yes, we want you to take action, we want to agitate you to protect your brand ASAP. But we also want to take responsibility. Trademark Factory® has always been about putting our money where our mouth is.
If you choose to use our services between October 1, 2015 and the date when new fees are in effect, and the new combined filing and post-allowance fees end up to be lower than the current CAD $450 per trademark, then we will refund you the difference in government fees from our own pocket.
So order your free trademarkability report at http://freeTMsearch.com to see if your brand can be trademarked. And if we’ve already done it for you but you’ve been procrastinating whether it’s the right time to move forward with our services, give us a call at 778.869.7281.
We’ll be happy to help.
How you treat your business’s intellectual property speaks volumes about you and your business. The more business owners I meet, the more parallels I see between their approach to trademarking and to doing business in general. Indeed, as T. Harv Eker put it, “how you do anything is how you do everything.”
I have written books and countless articles, as well as given many lectures and presentations about various technical aspects of trademarking. This post is different, because it’s not really about trademarks. It’s about you and your business.
We are taught to emulate successful people. This is why books like Think and Grow Rich and The Seven Habits of Highly Effective People are so popular. Well, guess what, all successful businesses protect their intellectual assets. This is not a coincidence.
Robert Kiyosaki is a great example. After his Velcro wallets company went bust because he hadn’t bothered to protect the IP, he chose not to repeat his mistake and securely protected several brands around his Rich Dad Poor Dad series and the Cashflow game before they were fully validated by the market.
Think of a hundred successful brands. I’d be surprised if you can find one that is not trademarked.
When I see an entrepreneur who runs a business under a great brand but refuses to get it trademarked, I know that whatever the excuse is, the real reason is always the same. They don’t believe in their ability to build a great business. Their dream is to build an OK business. Their #1 task is not to make a costly mistake. Their motivation is to avoid looking silly because they’ve invested too much in a business that failed. Will their friends laugh at them because they trademarked the brand for a business that went broke? What will their loved one say?
The real problem is that they don’t truly believe that they deserve to be recognized for something amazing.
If you ever learned or taught someone else to ride a bike, you will know that it is impossible to get anywhere if you’re only looking at your feet turning the pedals. You must look up in the direction you’re going.
Running a business is like riding a bike. Granted, you must deal with operations and day-to-day challenges (turning the pedals), but you won’t get very far unless you know exactly what you’re building (where you’re going). At best, you’ll be going in circles. At worst, you’ll get a vertigo and fall.
Never make decisions about trademarking based on where your business is today. These decisions must be made based on where your business may be if you’re really successful.
The Coca-Cola Company trademarked its brand (which is now valued at 80 Billion dollars) long before it became a transnational corporate giant. Filing the trademark application was one of the first things the company did in 1892. Why? The owners believed that they could build a business that one day might become a transnational corporate giant. Could this investment have been a waste of their money? Of course. But compare the risk of wasting a few hundred or even thousand dollars (in today’s money) to the risk of failing to protect what will be worth tens of Billions of dollars one day!
Let’s say that, for one reason or another, you choose not to protect the brand you developed for your business. Remember, when you’re out there networking and spreading your business cards with colourful logos and catchy taglines, you are sending a very clear message to your customers, business partners and competitors. The message is, “I am not sure if my brand or even my business will still be around in 2 years!”
Will every business be a tremendous success? Of course not. But why would you play a lose-lose game? Why not give your business a chance to grow into something huge?
I want to make one thing clear. As much as my firm is interested in new business, I’d rather you file your trademark applications yourself or through someone else than see you squander your brand! Why? Because to me, protecting your ideas and covering your assets® is not just a way to make a living, it’s both my passion and my mission!
So if you are running a business that is mildly successful or that you hope might be successful one day, here’s what you should do. It’s a simple, 3-step action plan:
1) Figure out if your brand is trademarkable. Head out to http://freeTMsearch.com right now and order your free registrability report. Yes, we offer this service completely free of charge, with no strings attached.
2) Figure out if you should trademark your brand. Not only will we send you the trademark search report, we’ll be happy to talk to you on the phone and help you build your brand protection strategy, so that you have complete clarity what needs to be done now, what can wait, and what can be safely ignored. This consultation is also free.
3) Finally, if in the back of your mind you know that you have something trademarkable that should be trademarked, stop procrastinating. Just do it!
Entrepreneurs who have built multiple successful businesses have automated the “come up with an idea—come up with a brand—trademark the brand” process the same way most of us have automated “wake up—wash face—brush teeth” process. Trademarking is truly a habit of highly successful business owners
Are you going to be one of them?
Mincov Law Corporation is proud to sponsor an edu-tainment event organized by my friend Roger Killen, an entrepreneur and the president of Startups that Work.
INSIDE THE DEN is a unique opportunity to meet, shake hands, take photos with and learn from BC entrepreneurs who have pitched on “Dragons’ Den”.
In fact, there will be TWO events on the same day instead of just one.
The day is Saturday, June 22.
The venue is The Theatre inside UBC at Robson Square in downtown Vancouver.
The Morning Show (9:00 am to 12:00 pm) will feature:
– DougieLuv (DougieDog – hot dogs)
– Lisa von Sturmer (Growing City – composting)
– Michael DeVisser (OHM Cycles – electric bicycles)
– Ann-Marie Fleming (Dog Quality – elderly dogcare)
Use the promo code Mincovlaw to get a 25% discount when you register for the MORNING SHOW.
The Afternoon Show (1:00 pm to 4:00 pm) will feature:
– DougieLuv (DougieDog – hot dogs)
– Lisa von Sturmer (Growing City – composting)
– Darren Shane (AStone Fitness – fitness equipment)
– Natalie Grunberg (Panty By Post – panties)
– Marco Longley (The HEFT – tool attachment)
Use the promo code Mincovlaw to get a 25% discount when you register for the AFTERNOON SHOW.
For more details and to watch a video below:
I will be giving away two prizes each worth $497 for a free 90-minute Intellectual Property Strategy Review session. If nothing else, this would be worth you attending.
Will I see you there?
I have always had an interest in how domain names coexist with the trademark law.
I was the first lawyer who represented a Russian plaintiff in a UDRP case (KOMMERSANT.COM, D2002-0531).
With a colleague of mine, I was also involved in a protracted litigation over a domain name, which had cost the client over $120,000.00 in legal fees – because the client did not properly renew their domain name registration.
Today, I have the pleasure to share with you an interview I did with Cybele Negris, the President of the Canadian domain names registrar, Webnames.Ca.
Without further ado, here we go.
Q. You are the President and the co-founder of Webnames.Ca. How is Webnames.Ca different from other registrars? Other than being patriotic, why would Canadians choose Webnames.Ca to register their domain names?
A. We were the original founders of .CA in Canada so we have a long legacy in this industry. John Demco my business partner founded .CA in 1987 so we are actually celebrating 25 years of .CA this year! He ran the .CA registry for 13 years charging no fees whatsoever to preserve a Canadian online identity for all of us. After we transferred the technology and registry to the Canadian Internet Registration Authority, we became one of the accredited registrars and grew to 30 people in a matter of four months. We’ve been in running Webnames.ca for 12 years now with an ever expanding range of online services. We offer a full range of domain extensions, premium business email, web hosting with servers in multiple locations in Canada, website design, SSL certificates and more.
We are an industry leader in Canada and clients from some of the world’s biggest brands and fortune 500 companies have chosen us. We have a reputation for exceptional service in an industry that is often pushing customers towards self-help with no service in order to get cheap pricing. We offer great value and highly competitive volume pricing coupled with high-touch service. Our average telephone response times are below one minute and we don’t outsource Canadian jobs to other countries.
Our industry is also full of companies that use unethical practices like Domain Slamming and other practices to obtain business. Webnames.ca is committed to acting with integrity. Our Better Business Bureau rating has consistently been A+ in all the years we’ve been in business.
Q. How and why did you decide to get involved with Webnames?
A. When I met my business partner John Demco, I was impressed with what he had achieved and his vision for securing an online identity for all Canadians. The fact he did this for free as a public service for 13 years blew me away. As our team worked to transition the .CA registry to the Canadian Internet Registration Authority, we (John and I along with our other partners Stephen Smith and Matthew Lane) saw a huge opportunity for the expansion of .CA across Canada as the rules were about to be liberalized. We wanted to continue to build on the legacy that John had started. Twelve years later, I can honestly say that I continue to be passionate about what we do.
Q. Are people registering more or less domain names today, compared to 5 years ago? Compared to 10 years ago?
A. There were about 153 million domain names world-wide by the end of 2007 and 50 million by the end of 2002. By the end of Q1 2012 there were more than 233 million domain name registrations representing an increase of 23 million domains or 11 percent since Q1 of 2011. (source Verisign Domain Industry Brief).
Today, most businesses even if they are a bricks and mortar store want some form of online presence. Individuals also register domain names for personal branding or to have a personal email that isn’t their ISP’s email address. (see my article about “Avoiding the Ugly Email”). It is not at all surprise that these numbers continue to grow so quickly.
Q. Compared to 5 and 10 years ago, whatÃ•s the average number of domain names a person typically owns?
A. I don’t have these numbers but anecdotally we have business with several thousand domains and those with one. Larger businesses tend to register more domains and protect all of the brand names, trademarks, campaigns and even all the variations of all of these including plural, singular, misspellings across all the domain name extensions.
Q. Several years ago, it was very popular for trademark owners to register domain names with various misspellings of the trademark to prevent typosquatting. Is it still the case?
A. Yes, this is still the case. For the cost of a domain name, it is much cheaper to protect the name than have someone else register the domain and divert traffic away. Dispute Resolution processes are time consuming and costly so most companies and tech-savvy individuals proactively register their domains across the different domain extensions and variations to avoid the pain of losing their domain to someone else.
Q. How often have domain names registered through Webnames.Ca been involved in UDRP and CDRP proceedings?
A. Very few actually. I’d say on average the numbers are in the single digits each year.
Q. Do you have the statistics as to the results of these proceedings (% of transfers for both UDRP and CDRP)?
A. On the UDRP side for gTLD’s:
http://archive.icann.org/cgi-bin/udrp/udrp.cgi has an incomplete list of the archived proceedings between 1999 and 2007 with 18,754 in total.
http://archive.icann.org/en/udrp/proceedings-stat.htm has some past statistics.
More recent proceedings are tracked by each of the approved Dispute Resolution Service Providers.
On the CDRP side for .CA: CIRA does not publish any statistics but the numbers are so small that those who are interested can scan through each ruling. The rulings and the list of each dispute by year are listed at http://www.cira.ca/legal/cdrp/dispute-resolution-decisions/.
Q. ICANN has introduced the new gTLDs. What is it, why is it being done and what is your opinion of this development?
A. The Internet Corporation for Assigned Names and Numbers, the governing organization for generic Top-Level-Domains (gTLDs) like .com, .net, .org, .biz, etc, has decided to expand the number of domain name extensions in the world. Currently there are less than two dozen gTLD’s yet ICANN has received over 1900 applications for new TLD’s.
This development will change the landscape of the internet as we know it. There are three groups of gTLDs which will be released. 1. Generic domains like .shop, .web, .site, .music, .eco, .food 2. Geographical domains like .berlin, .nyc, .paris or 3. Brand or company specific names like .IBM, .Google, .Nike. The brand specific domains will likely be retained by the companies for internal use only rather than for public registration.
Webnames.ca has been preparing for this development for many years and will be launching a pre-order system shortly.
Q. Will this result in dramatically increased costs for trademark owners as they will feel obliged to register more and more domain names in the new gTLDs or will the novelty be largely ignored by established companies?
A. Intellectual property professionals are bracing themselves for a lot of work in the future. In my opinion, large companies will continue to defend their trademarks and brands and there may be a rush for more trademark applications. It will of course get a lot more costly to manage brands online.
Smaller companies will likely not be able to afford buying up every extension to protect their brand or trademarks and there will probably be more abuse from cybersquatters and more dispute resolution filings happening in the future.
In the end, the market will decide which domain extensions are popular and which are not. Some of the domain registries may fail if they can’t compete for market share because there will be so much choice.
Q. Webnames offers an IP Vulnerability Quiz, which looks like a unique feature. It is commendable that you encourage brand owners to pay attention to their IP. Are there any ways in which you go beyond what other registrars do to support IP owners?
A. We do regular comprehensive brand and IP audits for certain corporate and managed clients. Because some of these clients often register large numbers of domains at a time, we offer a variety of payment options including invoicing, payment by cheque, wire transfer, prepayment and more. Our system is structured to support large domain portfolios with bulk tools allowing for fast and easy bulk updates, including domain registrations, renewals, DNS modifications and more. Our Parent-Child Account Management is also very popular as this powerful feature empowers large companies to manage domain names for multiple departments or clients from one master account. Domain hijacking is also a huge risk and our exclusive “Account Lock” security feature gives domain portfolios an additional layer of protection by restricting who can access the account by IP address range. Our experienced account managers help companies determine domain portfolio risks and opportunities and develop a domain strategy. We can also assist with domain brokerage and escrow services as needed.
Thank you, Cybele.
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