May27th

2012

May 27, 2012 @ 23:42:51
TM vs. R (Lessons From A Franchise Show)
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Yesterday, I attended a Franchise Show in Vancouver.

It was a great event, even though less populated than expected due to good weather.

One thing I could not help but notice was the use by many franchisors and potential franchisors of the ™ sign next to their trademarks.

In context of franchising, this is a symptom of one of two very problematic scenarios.

In the first scenario, the franchisor actually has obtained the registration of its trademark, but continues to use the ™ sign in its marketing materials instead of the ® sign. Not only does this substantially depreciate the perceived value of the franchisor’s brand in the eyes of potential franchisees, such use is also confusing.

In the second scenario, the franchisor has not even applied for registration of its trademark. Granted, there are many businesses for which a registered trademark is an unnecessary luxury. This is the case where the trademark is not something that causes customers to buy from the business. Things are very different, however, in case of franchising. It is the brand that is the franchisor’s product, not what the brand offers to end customers. If a franchisor hopes to build a Canada-wide net of franchisees, it cannot rely on the notoriety of its trademark in one Province. Without a federally registered trademark, the value of the franchisor’s offering is questionable.

To recap, these are some of the benefits that a registered trademark (®) has over an unregistered trademark (™) in Canada:

    – The right of exclusive use of the trade-mark across Canada with goods and services covered in the registration, with no geographical limitation to the area where reputation and goodwill has been established;

    – No one can register a trademark that is the same as or confusingly similar with your registered trademark;

    – The registration is prima facie evidence of your ownership and in a dispute involving a registered trademark, you do not have to prove ownership, the burden of proof is on the challenger;

    – Registrar of Trade-marks will notify the owner of a registered trademark of the advertisement of somebody else’s trademark application if the Registrar is in doubt whether that other trademark is registrable;

    – The right to sue for trademark infringement pursuant to Sections 19 and 20 of the Trade-marks Act;

    – The right to sue for depreciation of the value of the goodwill pursuant to Section 22 of the Trade-marks Act;

    – A registered trademark becomes incontestable after being registered for five years: a person who relies on common law rights may be unable to protect and register its trademark if another party registers a confusingly similar trademark and that mark is on the register for more than five years.

If you run a business that uses or sees franchising as its business model, wait no longer – Register your trademark in Canada now!

Categories:Intellectual Property:Intellectual PropertyTrademarks
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