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!
As a follow-up to my post on Asian domain name scams, I received an email from Christopher Hofman Laursen.
He sent me a link to his post on the same topic where he provides an extensive list of Chinese domain name scammers with names and emails.
Certainly worth checking out!
Last week, I have delivered a seminar on trademarks through Vancouver Business Network.
Among other things, I explained that business owners can file their own trademark applications in Canada because there is no mandatory rule that would require them to use a trademark agent for that. I also said that it may not be such a great idea if you don’t know what you’re doing.
The night after the seminar, I received an email from a business owner who, about a year ago, was shopping around for a good deal to register three trademarks for his business.
Eventually, he decided to file them on his own.
Unfortunately, he now received office actions for all three of them.
One is especially troublesome, because the examiner is of the opinion that the mark is descriptive of the services in association with which it was applied for.
The problem is not with the mark itself, the problem is with the way the business owner drafted the statement of wares and services. He should have worded the statement of wares and services more broadly, so that it wouldn’t be essentially the description of the mark itself. Unfortunately, he can no longer do that, because after the application has been filed, one cannot broaden the scope of goods and services any more.
So the end result is: he saved a few thousand dollars on lawyer fees, yet he wasted a year investing his time, effort and money building a brand he can’t register as a trademark.
Was it worth it?
It is with great pride and pleasure that I can finally announce that Protecting Your Ideas and Covering Your Assets® is now a registered trademark of Mincov Law Corporation.
It was more than just a “file & wait” experience, since the Canadian Intellectual Property Office cited another trademark “Protect Your Ideas” previously registered by another firm against my application. It took some creative effort, including references to French language translation of the trademark, to overcome this objection.
First down, several more to go.
I am also excited to announce that I will be conducting a free workshop on trademarks through Vancouver Business Network on September 17, 2013 at 6PM.
The original title of the presentation “You got a brand. Now what?” was renamed to “How To Protect Your Brand With Trademarks” for greater clarity. But the idea remains the same, it’s not enough to come up with a good name, logo or tagline. As any other business asset, you need to protect your trademarks.
No entrepreneur starts a business with an idea that their business will be just like everybody else’s. How many people refer to Facebook as “Mark Zuckerberg’s website?” Successful brands transcend their owners. This is the power of a brand. And if you don’t protect it, you are not being serious about your business.
The Meetup organizers charge $5.00 at the door, but the workshop itself is free.
Please RSVP at http://www.meetup.com/the-vancouver-business-network/events/138147612/ to attend this event.
If you are an entrepreneur, you need to know when, how and why to protect your brand.
If you are in the business of brand development (designers, advertisers, marketers, printers, etc.), you will learn how to provide massive added value to your customers at no extra cost to you.
If you want clear, no B.S. answers about your trademarks, you don’t want to miss this presentation.
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Tags:Small BusinessNew Copyright ActFair DealingCollectivismPhilosophy