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.

1. Better Business Bureau
The NAME GAME
Protecting Product or Business Names
Douglas B. Thompson – THOMPSON COOPER

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. 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. 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. 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. Need for Consistency
Need to use the Trademark “as registered”
word variations are not acceptable
Logos sometime need to be “refreshed”

7. Disney Example - Roo

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. Scenario #1 – Surname
THOMPSON CONSTRUCTION
DOUGLAS B. THOMPSON CONSTRUCTION
BIRD CONSTRUCTION
ALEXANDER GRAHAM BELL Construction

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. Scenario #2 - City in Name
SAANICH BOTTLED WATER
VICTORIA BOTTLED WATER

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. Scenario #3 – Descriptive/MisDescriptive
NO WAX FLOORS
ORGANIC VEGTABLE MARKET

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. Scenario #4 – Foreign Language
TAGLIATELLE
(Italian for “noodle”)

16. Answer Scenario #4
Registering name in any language
for a product or service is prohibited s. 12(c)

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)