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The Name Game - Protecting Product or Business Names

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Not all Trademarks are capable of being protected. This presentation is intended to make you aware of the rules so that the Trademark you choose can be protected.

Published in: Law
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The Name Game - Protecting Product or Business Names

  1. 1. Better Business Bureau The NAME GAME Protecting Product or Business Names Douglas B. Thompson – THOMPSON COOPER
  2. 2. Trademark anything you use to distinguish your business Name of business Name of product Logo Slogan shape, colour, packaging, sound, scent, taste, texture
  3. 3. Rights in an Unregistered Trademark Entitled to protection within a geographical area that you can prove you have established a reputation that the Court should protect
  4. 4. Rights in a Registered Trademark Entitled to protection across Canada but only with respect to products or services that are considered to be “confusing”
  5. 5. Tests for “Confusion” Factors: How “distinctive” is the mark? How well known is the mark? How long has each mark been in use? How similar are the goods, services or business? How similar are the “channels or trade”? How strong the degree of resemblance? (appearance, sound, ideas)
  6. 6. Need for Consistency Need to use the Trademark “as registered” word variations are not acceptable Logos sometime need to be “refreshed”
  7. 7. Disney Example - Roo
  8. 8. Some Trademarks are NOT PROTECTABLE Give your graphic designer a Trademark to work with that CAN be PROTECTED Reviewing situations where businesses make mistakes
  9. 9. Scenario #1 – Surname THOMPSON CONSTRUCTION DOUGLAS B. THOMPSON CONSTRUCTION BIRD CONSTRUCTION ALEXANDER GRAHAM BELL Construction
  10. 10. Answer Scenario #1 - Surname Registering words that are “merely” surnames prohibited s.12(a) Overcome by using full name and giving consent Consent not required if dead for over 30 years Exceptions to Rule – MacDonalds s.12(2)
  11. 11. Scenario #2 - City in Name SAANICH BOTTLED WATER VICTORIA BOTTLED WATER
  12. 12. Answer Scenario #2 – City in Name Registering word that indicate “place of origin” prohibited s.12(b) Note: Victoria is not just a City name it is also a woman’s name Exceptions to Rule – OAKBAY MARINA s. 12(2)
  13. 13. Scenario #3 – Descriptive/MisDescriptive NO WAX FLOORS ORGANIC VEGTABLE MARKET
  14. 14. Answer Scenario #3 – Descriptive/Misdescriptive Registering words that are clearly descriptive or misdescriptive of goods or services is prohibited s. 12(b) Must insert a “distinctive” word Exceptions to Rule – Canadian Tire s.12(2)
  15. 15. Scenario #4 – Foreign Language TAGLIATELLE (Italian for “noodle”)
  16. 16. Answer Scenario #4 Registering name in any language for a product or service is prohibited s. 12(c)
  17. 17. Cases to Illustrate Vancouver Community College v Vancouver Career College - VCC Dr. Patrick Lum v Dr. Coby Cragg – OCEAN PARK (evidence that Ocean Park was a neighbourhood in Vancouver)

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