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Trade-mark Truisms: Best Practices for Acquiring and Managing Trade-marks in Canada

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Trade-mark Truisms: Best Practices for Acquiring and Managing Trade-marks in Canada

  1. 1. Trade-mark Truisms Best Practices for Acquiring and Managing Trade-marks in Canada Lorraine M. Fleck May 31, 2010
  2. 2. “The early bird gets the worm”  Generally, the person who uses a trade-mark first in Canada has rights in the mark.  Trade-mark applications are generally considered on a “first come, first served” basis by the Canadian Trade-marks Office.
  3. 3. “Use or lose it”  Trade-mark rights in Canada are acquired and maintained by use.  Use claims for trade-mark registration applications must be accurate to have a valid registration.
  4. 4. “An ounce of prevention is worth a pound of cure”  It is recommended to order searches and obtain a legal opinion to assess a trade-mark’s availability before trade-mark use and filing an application.
  5. 5. “An ounce of prevention is worth a pound of cure”  Domain name and social media account registrations are also key to protecting any rights and reducing costs.
  6. 6. “An ounce of prevention is worth a pound of cure”  Franchise agreements, as well as operations manuals, should address trade-marks use on the Internet and in social media.
  7. 7. “You don’t know what you’ve got ‘til its gone”  “Policing” your trade-marks can help to maintain their distinctiveness and may also help to prevent customer confusion and lost revenue.
  8. 8. “You don’t know what you’ve got ‘til its gone”  Documenting trade-mark use is critical in the event you need to assert or defend your rights in your trade-marks.  Such documentation can also be useful for obtaining financing or selling your business.
  9. 9. “You don’t know what you’ve got ‘til its gone”  Avoid “naked” licensing – ensure your business has direct or indirect control over the quality or character of the goods/services offered under your company’s trade-marks to ensure that trade-mark use is attributed to your business.
  10. 10. “You don’t know what you’ve got ‘til its gone”  Inaccurate use claims in trade-mark applications can void the application – resulting in a piece of paper as opposed to assertable rights.
  11. 11. Thank you Lorraine M. Fleck, Hoffer Adler LLP Barrister & Solicitor | Trade-mark Agent lfleck@hofferadler.com These slides do not constitute legal advice.

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