This document discusses brands, trademarks, and advertising. It begins by defining what a brand is, noting that a brand comprises a product or service, packaging, name/logo, promotion, and appeals to customers physically, aesthetically, rationally, and emotionally. It then defines what a trademark is, explaining that it distinguishes one company's goods/services from another's. The document recommends conducting trademark searches to identify potential issues and minimize risks. It also explains why trademarks should be registered, providing exclusive rights and prima facie evidence of ownership. The document concludes by discussing proper trademark use and marking.

1. Brands, Trademarks,
and Advertising
Karin Binder, Trademark Agent
John G. Leckie, Partner
January 27, 2016

2. What is a Brand?
A Brand is comprised of:
• Product / Service
• Packaging “get up”
• Brand name and/or logo
• Promotion and advertising
 Appeal to the customer
• Physical, aesthetic, rational, emotional
 A brand embodies everything of value a company offers
2

3. What is a Trademark?
 A “trademark” is a word, design, symbol, sign or other
device capable of:
• distinguishing the wares or services of one company from those of
another (a source identifier)
 Not generic words
 Not names for new products
 Different from trade names
• a Corporate Name Registration per se does not necessarily entitle
the company to use its name as a trademark
3

4. Why conduct a Trademark Search?
 Identify potential issues with a trademark
• Oppositions;
• Infringement;
• obstacles requiring defence of your trademark (i.e. confusingly
similar marks); and
• Dilution
 Save time and money
• Find out up front whether trademark will encounter issues
• Minimize risk of investing in branding, websites, advertising
campaigns, etc. only to find out that the mark you invested in can’t
be registered
 Once cleared; apply to register the trademark
4

5. Why register your Trademark?
Minimize Uncertainties
Registered Trademarks are regulated by the Canadian
Intellectual Property Office and valid across Canada;
Common Law Trademarks are regulated by the Courts and
geographically restricted to the area in which you can show
(i.e. evidence) a goodwill/reputation.
• Registration grants exclusive rights
• Registration is prima facie evidence of rights
• May prohibit others from using (and registering) confusing
trademarks
• Can sue for infringement
• Investors want to ensure you own your IP rights
5

6. Proper Use
 Use, use, use – failure may result in loss of rights
 “Use” has special definition:
• …at the time of transfer of the goods…in the normal course of
trade…the trademark is applied on the goods themselves or the
packaging…
• …with services if the mark is using or displayed in the performance
or advertising of those services…
 Use as registered (or re-apply)
 Don’t allow others to use without a licence
 Label and advertise correctly (also on websites!)
• Do NOT use as a Noun
 Wrong: Phone me on my BLACKBERRY
 Correct: Phone me on my BLACKBERRY smartphone
6

7. Proper Use
• Do NOT use as a Verb
 Wrong: BBMing is free
 Correct: Texting on the BBM messaging application is free
• Do NOT use in plural
 Wrong: These game apps are available on BLACKBERRIES
 Correct: These game apps are available on BLACKBERRY smartphones
• Do NOT use in possessive
• Wrong: BLACKBERRY’S battery life is superior
• Correct: The battery life of BLACKBERRY smartphones is superior
Are you using your trademark properly? Here’s a TEST:
1. Remove the Trademark from the sentence in which it is used;
2. Ask yourself if a complete sentence remains
7

8. Proper Use
Consistency builds strong trademarks
8

9. Marking
 Use proper marking
• ® - Registered Trademark
• MD – Marque Déposée, French registered trademark
• TM – Unregistered Trademark
• MC – Marque de Commerce, French unregistered trademark
 Why?
• Product branding and awareness
• Provides notice of your registered trademark
• Also important when licensing
9

10. Summary
 Budget
 Search to Clear
 Register
 Use and Avoid Losing
10

11. 1. Basics of Advertising Law
2. Recent Enforcement Activity
3. Contests and Promotions in Social Media
4. Other Social Media Issues and Risks
5. Endorsements and Bloggers/Influencers
11
Introduction

12. Basics of Advertising Law
12

13. Basics of Advertising Law
Competition Act
 Prohibits making representations that are false and
misleading in a material respect
 Penalties:
• Individual: $750,000 and
$1,000,000 for subsequent order
• Corporation: $10,000,000 and
$15,000,000 for subsequent order
 Not only the literal words, but the general impression
of advertising must be truthful
13

14. Basics of Advertising Law
Claim Substantiation
 The Competition Act requires advertisers to have adequate, proper
and current tests to substantiate claims regarding performance,
efficacy and length of life of products
 Substantiation will vary depending on the claim:
• Consumer preference claims: survey evidence
• Performance claims: technical data to support
Price Claims
 The Act also prohibits misleading price claims:
• In order to claim a “sale”, must comply with time or volume test
• Time Test – the retailer or advertiser must offer the product at the regular
price in good faith for a substantial period of time
• Volume Test – at least 50% of the volume of stock must have actually
been sold at the regular price
14

15. Basics of Advertising Law
When advertising goes wrong …
 Money spent on fines, correction
notices and lawyers
 Class action lawsuits
 Competitive disputes are costly
and could cause counter-attack
 Company can be put on Bureau
Consent Order watchdog list
 Reputation diminishes
15

16. Recent Enforcement Activity
16

17. Recent Enforcement Activity
1717
"Consumers are entitled to clear and precise information when making their purchasing
decisions and need to be confident that the information they receive regarding additional
fees is truthful and accurate.“ – John Pecman, Commissioner of Competition
 Bureau alleges that the car rental companies have
engaged in misleading advertising by:
• charging more than advertised rental charges (by failing to disclose
certain non-optional fees consumer are required to pay)
• mischaracterizing these non-optional fees, when disclosed, as taxes,
surcharges or fees that the rental companies are required to collect from
consumers, as opposed to mere costs recovery by the companies)

18. Recent Enforcement Activity
Competition Bureau vs. Avis/Budget
 Competition Bureau has filed a Notice of Application
seeking $10 Million “administrative monetary penalty”
against each of Avis, Budget and their parent companies
 Application also seeks a 10-year prohibition order,
corrective advertising and consumer restitution order
18

19. Recent Enforcement Activity
1919
"We take misleading advertising very seriously" (…) "Consumers deserve accurate information
when making purchasing decisions and need to have confidence they are not being misled by
false advertising campaigns.” – Melanie Aitken, Former Commissioner of Competition.
 Rogers, Bell and Telus were all sued by the Bureau in 2012 in relation
to failure to disclose certain extra costs for certain texts and apps
referred to as “premium rate digital content”. Telus has since agreed
to give rebates of up to $7.34 million to customers who incurred
premium text messaging charges.

20. Recent Enforcement Activity
 Bell Canada agreed to a $10 million penalty relating to
undisclosed mandatory fees in wireless, home phone
and internet, such as touch-tone fees or modem rental
fees. Fees were buried in fine print in a manner which
the Bureau considered “hidden”.
 Bell also agreed to pay 1.25 million in relation to the
posting by employees of fake reviews of apps without
disclosing that they were employees.
 Rogers was ordered to pay a penalty of $500,000 in
relation to false and misleading claims that its CHATR
brand wireless service had fewer dropped calls than
other carriers.
20

21. Contests and Promotions
on Social Media Platforms
21

22. Contests and Promotions
Online and Social Media Contests
 Be aware of platform terms and guidelines
 Be very clear who is eligible
 Limit to one entry per person
 Institute a comprehensive “glitch” disclaimer
 Obtain rights to any material you are asking participants
to submit
 Limit to adults or get parental consent
 Beware voting fraud (where public voting involved)
22

23. Contests and Promotions
Minimizing Exposure (Consumer Generated Content):
 Ensure rules/terms CLEARLY explain types of materials
that are NOT permissible
 DO NOT allow material to be directly posted online without
first being passed through a content moderator
 ALWAYS reserve the right to remove and/or disqualify
materials AT ANY TIME and FOR ANY REASON
 Allow users of the site to contact you regarding any material
on your site that they consider inappropriate
23

24. Other Social Media Issues and Risks
24

25. This is Important …
25
If you are looking for RISK FREE….
then social media is NOT your playground

26. This is Important Too!
 Always Remember: Advertising on social media sites is
still subject to the same basic rules, regulations and
policies that apply to other more traditional forms of
media.
• contest law;
• false and misleading advertising;
• privacy law; and
• IP infringements.
 BUT … you also now need to consider each social
media sites’:
• terms of use;
• licences;
• advertising guidelines; and
• contest and promotions guidelines.
26

27. Social Media Policies
Posting Policy:
 The rules that community members must follow when
posting content. For example:
• users must have the rights to all materials they post;
• opinions appearing on the site are not necessarily those of
company;
• posters agree to keep their posted content civil, and not to post
offensive materials; and
• An employee posting policy is also recommended.
27

28. Endorsements and
Bloggers/Influencers
28

29. Bloggers, Brand Ambassadors and Influencers
 Disclose “Material Connection”
 Ensure posting guidelines and policies are followed
 Have them sign an “Influencer Agreement” covering:
• responsibilities;
• arrangements for delivery of samples of products for Influencers
and their followers to try or be awarded as prizing;
• the frequency and number of posts the Influencer is expected to
deliver;
• a Code of Conduct to be followed in terms of both posts and
conduct of the Influencer/ambassador at public-facing events;
• the consideration to be paid to the Influencer and method of
disclosure of that payment; and
• any exclusivity arrangements.
29

30. Bloggers, Brand Ambassadors and Influencers
Be sure to specify:
• that testimonial statements must reflect real experience of
product or services;
• acceptable and unacceptable statements about products or
services;
• how relationship between advertiser and ambassador will
be disclosed;
• how product or services will be tested by ambassador;
• media and timing of statements about products and
services; and
• Employees must also disclose their connection.
30

31. Thank You
montréal  ottawa  toronto  hamilton  waterloo region  calgary  vancouver  beijing  moscow  london
John G. Leckie
Tel: 604.443.7603
Email: john.leckie@gowlings.com
Karin Binder
Tel: 604 891 2729
Email: karin.binder@gowlings.com

32. Thank You
montréal  ottawa  toronto  hamilton  waterloo region  calgary  vancouver  beijing  moscow  london
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