In a recent case Woodpecker Hardwood Floors (2000) Inc. v. Wiston International Trade Co., Ltd. and Wiston Building Materials Co., a BC Supreme Court judge granted a court order (injunction) preventing the owner of a registered trademark “WOODPECKER” from using it because this name for many years had been used by that company’s competitor who neglected to register their trademark.
Woodpecker Hardwood Floors have been using the brand since at least 2000, without registering it as a trademark with the Canadian Intellectual Property Office (CIPO).
Lo and behold, in 2011 a competitor, Wiston, a company started in 2009, filed an application for the trademark WOODPECKER with CIPO, which application has matured to a registration in 2013.
Mr. Justice Silverman found that “Having two ‘Woodpeckers’ selling hardwood flooring within a mile of each other in Richmond would seem to run contrary to public interest.” Because Woodpecker Hardwood Floors started using their mark years and years prior to Wiston, the judge recognized that Woodpecker Hardwood Floors had the prior right that trumped Wiston’s right to the registered trademark.
This case has 3 important lessons for Canadian businesses. They are nothing new to trademark lawyers, but this case presents a great example of how poor IP strategy can spell trouble.
So here are the three things to remember:
1. A trademark registration is not a tool to override pre-existing rights of your competitors. Even if you succeed with such registration, it will not be worth much because it can be taken away from you easily and it cannot really be enforced against the competitor anyway.
2. Had Woodpecker Hardwood Floors registered their trademark early, the Canadian Intellectual Property Office would never have registered a confusingly similar trademark for Wiston, so all of this would have been a non-issue to begin with.
3. If the old Woodpecker had registered its trademark, it would have cost at least 10-15 times less compared to having to take Wiston to court over an unnecessary dispute.
I’ve said it many times, if you have developed a valuable brand for your business and you have not registered it as a trademark, you are not being serious about your business. It’s not even about bringing a knife to a gunfight. It’s about bringing a blindfold to a gun fight – simply hoping that somehow things will figure themselves out. Even if they occasionally do, the cost may be prohibitive.
With the Trademark Factory™ offering a unique new way to register trademarks in Canada with a Triple Peace-of-Mind Guarantee, there is really no excuse for neglecting to protect your valuable business assets!
I will be holding a flood of workshops and presentations in the next 30 days.
I thought I’d put them all in one place, here.
October 8, at 11am PST: Branding Your Fitness Business with Velocity Athletic Training Radio
October 17, at 4pm PST: Intellectual Property in Plain English at Capilano University BOSS Entrepreneurship Program
October 21, at 7pm PST: Developing and Protecting Online Brands with Internet Masterminds Group Meetup
October 30, at 11am PST: Terms of Endearment: Contracts for Wedding Professionals at Frame to Finish Expo with Canon
November 2, at 11am PST: Legal Foundations and Intellectual Property at SFU Entrepreneur of the Year Jumpstart program
Looking forward to sharing my passion for intellectual property!
If you came to a restaurant and asked if they could make a good steak for you, and the waitress told you that they’re not sure but they are sure going to try very hard – what are the odds you would order it?
If you asked the waitress how much the steak is going to cost, and she told you that it costs $10 to place it on the grill and then the chef is going to charge you by the minute depending on how difficult it is to cook it to the perfect temperature – how likely would you be to order it?
If – not being convinced that they are any good at steaks – you then asked the waitress if they would offer you a refund if the steak would not come out right, and told you that there would be no refunds because they would have invested a lot of time, products and effort trying to the best of their abilities – would you ever order it from that place?
Below is a typical response that a business owner would receive from the vast majority of law firms and trademark agents in Canada to the question how much it would cost to register a trademark in Canada and whether or not the firm would provide any guarantees:
With regard to approximate costs, we attach a copy of our latest Schedule of Fees for your reference. For your convenience, we highlight the approximate costs of preparing and filing a single trademark application as $XXX plus official fees of $XXX. If the trademark application proceeds directly to allowance, the fees applicable to registration of the trademark application will be about $XXX plus official fees of $XXX.
If an adverse examination report is issued during examination, we will docket such response and report to you with our recommendations to overcome the objections raised in the adverse report as well as the approximate costs. The prosecution costs for the matter will vary depending on the nature of the objections raised and the hourly rate of the lawyer preparing the response. The writer’s hourly rate is $XXX. The approximate cost of reporting to you will be from $XXX. Complex objections requiring submission of evidence are subject to highly variable cost.
Most applications take 14 – 18 months from the date of application to achieve registration if there are no significant delays, but if the application is ultimately unsuccessful, we do not offer a refund.
No wonder most business owners are terrified of registering their trademarks in Canada. A low-cost application fee is simply a bait to get the customer in the door to then bill and bill until the application is either registered or refused. What business owner would not agree to pay a few extra hundred dollars after investing a thousand already? And then just another few extra hundred dollars here and there?
Don’t believe me? Call any law firm in Canada and ask two questions:
1. Can you guarantee a fixed flat rate that would cover the entire process from start to finish, including responses to all office actions that may be issued during the process?
2. Do you guarantee that the trademark will be registered, and if the application is ultimately unsuccessful, will I get my money back?
Now compare their response with the answer you will receive from the Trademark Factory:
We charge a flat rate of $2,000 + tax + government fees for one trademark application in Canada (the total comes to $2,690). This amount covers everything from the initial search of registered trademarks, drafting and filing the trademark application to unlimited follow-up correspondence with the Trademarks Office, responding to all office actions, filing the declaration of use, and obtaining the registration certificate.
We guarantee that the Canadian Intellectual Property will approve your trademarks. Otherwise, you get all of your money back, including the fees you paid to the government.
If you use a remarkable name, logo or tagline for your business, the Trademark Factory™ is the perfect solution to register them as trademarks in Canada.
As I wrote in the previous post Four Important Elements of a Trademark Application, one of the elements of a trademark application is a list of products and services in association with which the applicant is seeking to register the trademark.
Often, self-represented trademark applicants see this as an opportunity to promote their business.
I am a sucker for using non-traditional ways of marketing, but a trademark application is really not the right vehicle.
In the vast majority of cases, Canadian Intellectual Property Office is going to issue an office action suggesting that “a statement in more specific terms of the wares and services is required”. Most self-represented trademark applicants don’t know how to respond to these, and so they abandon their trademark applications, losing precious time and money.
Here are a few examples of how NOT to write your statement of wares and services:
We offer, fitness orientation, cardiovascular, flexibility and strengthening equipment. Plus club associates are there to help you in your fitness endevours. There is also support, motivation. and coaching. Included are change rooms and club amenities.
We offer special rates, offers, discounts, promotions on exclusive products and services related to travel, entertainment and shopping.
The requested trademark will be used to describe how our service is delivered. We provide personal care to seniors. We assist seniors with activities of daily living such as meal preparation, personal care, light housekeeping, etc. We offer choice, comfort and dignity to our clients who want to stay in their homes.
You are not trying to sell anything through your trademark application.
You are not trying to convince Canadian Intellectual Property Office that your products or services are good enough to deserve to be registered as a trademark.
To be honest, Canadian Intellectual Property Office does not care about the quality of your products or services.
All it cares about is whether the list of products and services is specific enough to clearly delineate in association with which products and services others can or cannot use a similar trademark.
Getting your trademarks registered in Canada used to be a complex process full of misunderstanding and frustration. That is until the Trademark Factory™ was launched. Find out why the Trademark Factory is an optimal solution to register your trademarks in Canada.
Business owners who want to protect their branding need to know that there are four important elements in any trademark application.
This is important regardless of whether they use the Trademark Factory™ to register their trademarks, whether they file themselves or whether they use a different trademark agent or a lawyer (why would they?).
These four elements are: trademark owner, trademark, goods / services, and dates.
The first one is straightforward: a registered trademark must be owned by an entity, a partnership or an individual. The public and Canadian Intellectual Property Office need to know who it is. If during the registration process, the trademark changes hands, you can always assign the pending trademark application to a new owner.
A trademark application may only cover one single trademark. If you have several trademarks, each will require a separate application. While there is often a temptation to combine several trademarks into one application to cut the cost of registration, it’s really not a good idea, especially if you use thus combined trademarks separately. This is because in Canada any trademark that has not been used as registered for 3 years or more, can be cancelled on request of any third party. So if you lump a logo and a tagline into a single trademark registration, and then your tagline changes, you may lose rights in both the old tagline and the logo. This is because the registration protects your rights to the entire trademark and not to its elements.
Importantly, trademarks (whether registered or not) don’t give their owners a monopoly over the name or the logo itself. They only give a monopoly over their association with specific products and services for which the name or logo are used. For example, BLUE SHIELD trademark is owned in Canada by two completely different entities: one in association with prepaid financing and administration of medical services, and the other in association with various items related to welding. This is why the trademark application requires the applicant to specify in association with which products (wares) and services they use or are planning to use the trademark. Canadian Intellectual Property Office is very pedantic about the way the list of these products and services is drafted. If an examiner believes that a term in that list is not specific enough, they will issue an office action requiring that the application be amended. I will provide several tips about drafting the list of goods and services in my next post.
Finally, the dates. In Canada, one can only get a trademark registration if the trademark is being used in association with each and every one of the goods and services listed in the application. It is possible to apply for a registration before the use starts (it’s called “proposed use”), but the registration certificate will not be issued until the business owner files what’s called a declaration of use. A simple rule of thumb is: only list those products and services that you are currently using the trademark for and those that you believe you may start using it for in the next 2-3 years. If you have already been using the trademark at the time when you file the application, it is important to specify the earliest date that you can prove with evidence that you were using the trademark for.
The trademarking process used to be full of frustrations and complications for business owners. That is until the Trademark Factory™ was launched with its unique triple Peace-of-Mind guarantee. We guarantee that you will know your budget to a penny before you spend a dime; we guarantee that your trademark will be approved by the Canadian Intellectual Property Office – or you get all of your money back, including what you pay to the government; and we guarantee that you will not be frustrated with not being able to get a hold of your lawyer. This service is really the natural choice of business owners who value their branding and want to protect it in Canada.
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