Trademarking Guidelines

This guide provides a basic knowledge of the trademark law and practice and is not intended to take the place of professional advice of the specific circumstances of each case and proficiency in the law of this jurisdiction such as might be provided by a local trademark attorney.

 

CONTENTS

I. Introduction

1. Trademarks In Brief
1.1. What is a trademark?
1.2. What sources of law govern trademarks?
1.2.1. International
1.2.2. National
1.3. What types of marks can be effectively protected?
1.4. Reasons for protection of trademark
2. Protecting a trademark by its proper usage

II. Losing Trademark Rights

3. Inappropriate use
3.1. Uncontrolled licensing of the trademark
3.2. Dilution by third party
3.3. Dilution by tarnishment
3.4. Assignment in gross
3.4. Failure to police
3.5. Genericide
4. Non-use of the trademark
5. Trademark infringement and litigation
5.1. Basic elements if trademark infringement
5.2. Determining confusion
5.3. Types of trademark infringement

III. Appendix

I. Introduction

1. Trademarks in brief

1.1. What is a trademark?

A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols, or designs, that identifies and distinguishes the source of a good or service of one party from those of others and provide information to the consumer about the quality of such goods or services. Establishing recognition of the mark with consumers and maintaining that distinctiveness in the market so not to be lost the right on the mark requires concerted and consistent efforts, as well as strategic planning.

1.2. What sources of law govern trademarks?

1.2.1. International

The system of international registration of a trademark and its protection is governed by two main treaties – the Madrid Agreement Concerning the International Registration of Marks and the Protocol relating to that Agreement with the aim of rendering the system more flexible and more compatible with the domestic legislation of certain countries which had not been able to accede to the Agreement. Together, the Agreement and the Protocol are known as the Madrid System for the International Registration of Marks (the Madrid System) creating in effect a basis for an international registration and protection of marks. The Madrid System is administered by the International Bureau of the World Intellectual Property Organization (WIPO) based in Geneva, Switzerland.

International protection of trademarks and its use is also a part of the Paris Convention for the Protection on Industrial Property. It establishes a Union in which juristic and natural persons who are either national of or domiciled in a state party to the Convention shall, as regards the protection of industrial property, enjoy in all the other countries of the Union, the advantages that their respective laws grant to nationals. Concerning protection of trademarks, the Convention stipulates that “a mark duly registered in a country of the Union shall be regarded as independent of marks registered in the other countries of the Union, including the country of origin” and hence shall be granted protection in any of the other country who has signed it.

The Trademark Law Treaty (TLT) has the purpose to simplify and harmonize the administrative procedures in respect of national applications and the protection of marks. Individual countries may become party to the Treaty, as well as intergovernmental organizations which maintain an office for the registration of trademarks with effects in the territory of its member States, such as the European Union (EU) and the African Intellectual Property Organization (OAPI). The Treaty does not deal with the substantive parts of trademark law covering the registration of marks.

Since March 2009 the Singapore Treaty on the Law of Trademarks is into force. Its objective is to create a modern and dynamic international framework and standards for the harmonization of administrative trademark registration procedures. Building on the Trademark Law Treaty, the new Treaty has a wider scope of application and addresses new developments in the field of communication technology. As compared with the Trademark Law Treaty, the Singapore Treaty is applicable to all types of marks registrable under the law of a given Contracting Party. The Singapore Treaty includes provisions on the recording of trademark licenses, and establishes maximum requirements for the requests for recordal, amendment or cancellation of the recordal of a license.

Signatories of the main international treaties governing trademarks

Countries (Madrid Protocol Madrid Agreement, Paris Convention, TLT Singapore Treaty)

• United States
• Canada
• Australia
• United Kingdom
• European Union

Only the Madrid Protocol has been signed on behalf of the “European Union”, while its members are signatories to the other/others international treaties (as in case with the UK).

The United States, Australia and the United Kingdom are not signatories of the Madrid Agreement, but they have signed the Madrid Protocol, i.e. they have become part of the Madrid System. This means that if an US, Australian or British company owns a national trademark registration may submit an international application based on it, and when obtains it to seek protection in any other country – part to the Madrid Protocol.

1.2.2. National

In the United States trademarks are governed by both state and federal law. The federal statute providing the main, and by and large the most extensive, source of trademark protection is the Lanham Act which is found in Title 15 of the U.S. Code. The?Lanham?Act?defines?the?scope?of?a?trademark?and?the?process?by?which federal?registration?for?a?trademark?can?be?obtained?from?the?Patent?and?Trademark Office (USPTO). It also?prescribes?penalties?for?trademark?infringement.

However, this act is not the exclusive law governing U.S. trademark law, since both common law and state statutes also control some aspects of trademark protection. The federal law provides the main, and by and large the most extensive, source of trademark protection, although state common law actions are still available. The?Lanham?Act confers?broad?jurisdictional?powers?upon United?States?courts.

In Canada the Trade-Mark Act provides protection for distinctive marks, certification marks, distinguishing guises, and proposed marks against those who appropriate the goodwill of the mark or create confusion between different vendors’ wares (i.e., goods) and services or both. A mark can be protected either as a registered trade-mark under the Act or can alternately be protected by a common law action in passing off. It is governed by the Canadian Intellectual Property Office.

Trademark law in Australia is based on Trade Marks Act 1995 defines trade marks, what constitutes trademark infringement and defences and exceptions thereto, and sets out procedures for registration and other proceedings before the Registrar of Trade Marks. The legislation does not codify the law of trade marks in Australia; as a common law jurisdiction, a trade mark owner may also (for example) seek to protect its rights through legal proceedings for passing off. It is administered by IP Australia, a government agency at the Department of Industry, Tourism and Resources.

The laws that make up trade mark legislation in the United Kingdom (UK) are extensive. Their core is the Trade Mark Act 1994 covering the registration of trademarks and the protection of registered trademarks in the UK. The Act is administered by the Intellectual Property Office according to detailed Trade Mark Rules 2008. The law relating to trademarks may also be affected by Statutory Instruments (secondary legislation passed by parliament).

1.2. What types of marks can be effectively protected?

In terms of their development and ability to ensure effective protection, there are three types of marks that are considered inherently distinctive and thus immediately protectable, and two more which may or may not receive protection:

1. Coined trademark is the most inarguably distinctive, and therefore legally strong. It is a made-up word or invented term that serves only to identify the source of a product or service and has no other meaning that contains information about the product or service itself. Whether it is registered or not, chances are that a coined trademark will automatically entitle its owner to the strongest legal protection against copying or another infringements.

In practice, coined trademarks cannot be used by others in any commercial contest (by contrast to the most of other types of marks). Examples of coined trademarks are EXXON® for petroleum products, BLISTEX® Five Star Lip Protection, ACTIFED® Cold and Allergy Tablets, and UNIPOLTM Process Technology.

2. Arbitrary trademarks are actual words but used in an unexpected or arbitrary way, so they are not related in any way to, or contain any information about the nature of, the product or service which they identify. Most of the time, using an arbitrary trademark for one product or service will prevent the use of the same mark on similar or related products or services. However, unlike a coined mark, arbitrary marks may be used if the context of use is entirely different and the original mark is not too well known.

On the other hand, if an arbitrary trademark has become famous, then – under the principle of trademark dilution – it may be protected against use by others, no matter what the context of use. Examples of arbitrary trademarks are APPLE® for computers, ARROW® shirts, and PENGUIN® books.

3. Suggestive trademarks are words suggesting something or telling something about the products or services but do not describe the products or services themselves. Suggestive marks are often difficult to distinguish from descriptive marks, since both are intended to refer to the goods and services in question. Suggestive marks require some imagination, thought, or perception to reach a conclusion as to the nature of the goods, while descriptive marks allow one to reach that conclusion without such imagination, thought or perception. However, because of their similarity to the descriptive marks, suggestive trademarks are tougher to defend against infringements (infringers may argue that they are descriptive of the product). Examples of suggestive trademarks are COPPERTONE® tanning lotion, VERBATIM® computer discs, and WEAREVER® cookware.

4. Descriptive trademarks are words that merely describe the products or services, or their characteristics. Descriptive trademarks are entitled to little, if any, legal protection as trademarks unless and until they have achieved distinctiveness through years of exclusive use and advertising, i.e. developed secondary meaning. To this category of trademarks belong also surnames. Examples of such descriptive marks which can be considered descriptive but have developed secondary meaning are WINDOWS® for software, SHARP® for televisions, and McDonalds® restaurants.

5. Generic “marks” are words used to describe a quality, ingredient or other characteristics of a product or service but not its source. From one hand, generic terms will not become a trademark even if they are advertised so persistently that secondary meaning can be proven in the mind of consumers. From the other hand, a valid trademark can become generic if the public misuses the mark sufficiently for the mark to become the generic name for the product. Such erosion of a trademark into a generic term happens when its owner does not use it properly to maintain and protect its brand equity.

That is why proper trademark use is essential to keep a trademark from becoming generic and thus lose it (how to prevent a trademark of becoming generic is discussed in details in Section 2 below). The examples of former trademarks that became the generic name for a product are ASPIRIN and NYLONE. XEROX has spent lots of money and efforts to prevent its mark of becoming generic.

1.1. Reasons for protection of trademark

The main reason to protect a trademark lies in its value. The value of a trademark is determined by the strength, or goodwill, of the association between the trademark and its source, and it is the consumer who determines this value. It arises from its ability to identify the product or service so strongly that consumers ask for it by its brand name because they know from past experience the quality to expect.

The goodwill generated by well-known marks are valuable business assets. For example, the value of Coca Cola’s brand for 2010 is estimated at over $70 billion, this one of IBM is nearly $65 billion .

The loss of such trademarks would damage the company beyond repair, and the basic thing one should do, if he is the first to adopt and use a distinctive trademark, to prevent others from using confusingly similar marks for similar goods or services, is to register the trademark. The stronger a mark, the greater is ability to stop other uses of the mark.

Although not required in most of the countries, the mark owner may register his mark at national (federal and state level in the U.S.) and/or in one or more foreign countries and/or at international level (with WIPO). Owning a legal registration of a trademark provides his owner with many benefits, including:

•  Registration protects a company’s name or logo, which is often its most valuable asset;
• A legal presumption of ownership of the mark and exclusive right to use it nationwide in connection with particular goods or services;
• Registration decreases the likelihood of another party claiming that one’s trademark infringes upon their trademark;
• Registration provides official notice to others that a trademark is already taken; consequently, a company that later adopts a confusingly similar trademark can not claim ignorance of the mark;
• The trademark owner obtains the future right to make the mark “incontestable,” which provides conclusive evidence regarding the validity of the mark and of the registrant’s exclusive right to use the mark;
• The right to bring a lawsuit concerning the mark in court;
• National registration can serve as a basis to obtain registration in foreign countries, and get protection of the trademark from them;
• The trademark owner obtains the right to put a ® or TM and SM symbols, after the mark, alerting others to his registration and preventing the defense of innocent infringement;
• The trademark will appear in trademark search reports ordered by others, likely discouraging others from proceeding with the registration of the same or similar mark;
• The trademark registration offices will refuse registration to any trademarks it deems confusingly similar to the trademark in question;
•  The right to file a registration with national customs to stop the importation of infringing foreign goods.
• Registration grants the trademark owner the right to claim for recovering damages from the infringer;
• Registration allows for the effective appointment and control of licensees and agents;
• Registered trademarks are relatively easy to assign to third party;
• Registered trademarks can serve as security for loans in that they may be bonded.

It is important, however, that one use any trademark, registered or unregistered, properly.

2. Protecting a trademark by its proper usage

The main function of a trademark is to identify and distinguish one set of goods or services from another. But if some invention becomes really successful, people start using its name to identify the product itself. As a result the trademark used to describe the invention becomes generic and no longer identifies the source of the product. There have been several examples of inventions for which the trademarks became generic and are start being used as a term to identify the inventions, e.g. “aspirin”, “linoleum”, “escalator”, “thermos”, “zipper”.

To prevent his trademark of becoming generic, the mark’s owner must do his best to protect it and establish (or re-establish) that it is a trademark for his product or line of products, not a name for a type of product. Even though, he may still lose his trademark if the public adopts it as the name of a class of which his product is but a member. Generally, a trademark can become generic because:

(1) Consumers and the media start using it to refer a class of products rather than to the products of one particular company.

(2) Misuse of the trademark by its owner or those who are under the owner’s control (licensees, agents). Such misuse can be a critical factor in a court’s decision whether a mark has become generic, thereby losing its trademark significance.

The mark owner can avoid this by educating people about his trademark and using it properly following several basic rules:

1) A trademark should be used only as a brand name in combination with the descriptive or generic name for a specific product or service. This includes advertising, on the product itself, and using the trademark in conjunction with the generic name of the product on every label, container, or text referring to the trademark, as well as in spoken and printed communications. The goal of such use is to make the relevant public remember that the trademark refers to a brand or source of generic article, not to the class of articles itself.

2) A trademark should be used as an adjective. The function of a trademark is to identify a good or service one is providing and to do so, it cannot exist on its own, but needs a noun. The noun is the good or service that a company provides, e.g., HOLIDAY INN® hotels, LEVI’S® jeans, COLGATE® toothpaste.

3) Trademark variations should be avoided. Using a trademark as a verb, in the possessive or plural form, tends to make it into a noun or verb and thence into a product class.

4) A trademark should be used in a manner that distinguishes it in print from the surrounding text. It can be achieved by printing it in bold, italics, underlined, color, or larger font than the surrounding text, with quotation marks or capital letters.

5) The legal status of the trademark should always appear with it so that it is distinct from the product. Three trademark symbols are in common use: ®, TM and SM.

For the U.S. trademark owners this includes placing next to them the ® symbol for federally registered trademarks, TM for both registered and unregistered trademarks and SM for service marks. Alternatively, it can be used the statement, “Registered, U.S. Patent and Trademark Office,” or abbreviation “Reg. U.S. Pat. & Tm. Off.”

Using the ® symbol before a registration has been granted by the U.S. Patent and Trademark Office is a federal crime. If someone sells into the United States, usage of either symbol without a US trademark registration may prohibit future registration of his trademark in that country.

In Australia the ® symbol can be used when a trademark is registered with the Trade Marks Office. The TM symbol can be employed for either unregistered or registered trademarks. The SM symbol means that the sign or mark is used to promote a service. Registered trademark (provided the mark is registered in Australia or the packaging) materials makes it clear that the mark is only registered in another jurisdiction. Use of a legend is also possible, e.g., ABC is a (registered) trademark of Company X and used under licence by Company Y.

It is an offence under the Australian Trade Marks Act to use the symbol ® in connection with a trademark when it is not registered in Australia. Where one has a pending trademark application, it is acceptable to use only ™ symbol.

Canada’s Trade-marks Act does not include any marking requirements. However, the ® symbol (MD in French) can be used once a trademark is actually registered with the Trademarks Office. The TM symbol (MC in French) can be used at any time.

The ® symbol or the abbreviation “RTM” (for Registered Trade Mark) can be used in the United Kingdom to show that a trademark is registered, no matter that the mark can be registered somewhere other than in the United Kingdom. The TM symbol also can be used in the UK but it has no legal significance.

Using the ® and “RTM” symbols with not registered trademarks in the United Kingdom is a criminal offence under the Section 95 of the Trade Marks Act.

The use of the ® symbol in rest of the European Union countries is not explicitly regulated by trademark legislation. As a result, the use of the ® symbol in a different country – where the same trademark is not registered – is in general regarded as an act of unfair competition. However, according to a judgement by the Court of Justice of the European Union the EU wide operating companies are allowed to use the ® symbol next to a trademark within the entire EU on the condition that the company in question owns a registration at least in one EU member state. The TM and SM symbols are not popular in the EU states, where national languages dominate.

6) A trademark should to be used in connection with more than one product when possible. This strategy tends to encourage consumers to treat the mark as a trademark and an indication of source, not as a name of a product itself.

7) Trademark variations should be avoided. It should be spelled correctly, including spaces, hyphens, or other punctuation. It should be used without hyphenated variations or combined with other words. If trademark form is changed, consumers may believe that it is just another word that is subject to variation or grammatical manipulation, thereby breaking down the distinctiveness of the mark and contributing to the mark becoming generic.

Correct improper use of the trademark by others. The mark’s owner should make sure all advertisements comport with the protections previously mentioned, and immediately put a stop to any ads that do not do so. He should not tolerate infringers, and should challenge attempts to register marks that may cause confusion. He also must constantly monitor the mark use of his licensees or agents to ensure that their use is not eroding the trademark into a generic term. He should do what he can to ferret out and correct misuse of the mark by the public, industry, media, dictionary authors, and administration.

Methods like these help educate the public to use the generic name and not the trademark term as the name for the product. Proper use maintains a trademark’s ability to identify the origin of products and increases the trademark’s potential for “secondary meaning” or an indicator of quality. It also minimizes the likelihood that a trademark will become generic. Of course, the goal is not to just avoid a trademark from becoming generic and losing your trademark rights, but to create a distinct commercial impression in the minds of consumers regarding a trademark, and the products, services, and business it represents.

However, sometimes these efforts are not enough to protect a trademark of becoming generic, so it is also important a mark’s owner to monitor when his trademark is nearing genericity, and must battle to reclaim his mark from the public. By determining what the public believes about his mark (product’s name or product class), he can work out a plan that will change public perception and reduce future confusion.

To avoid any misuse of a trademark it is good also to make a guide for its usage explaining usage requirements, correct placement of the symbols, logos, etc.

II. Losing trademark rights

The government grants registration benefits to trademarks but in exchange the owners must monitor and use their marks to enjoy those rights. Trademark rights are not only acquired, they can be lost without proper use and care.

3. Inappropriate use

3.1. Uncontrolled (naked) licensing of the trademark

In Canada and the U.S., the licensor of a trademark has an affirmative duty to control both the nature and the quality of the goods and/or services of the licensee. Regardless of whether a license provides for quality control by the licensor, if the licensor does not actually exercise its right to control quality, the license agreement may by found to be a “naked license”, and such licenses can result in abandonment of a trademark.
To avoid the possibility of being judged abandonment, a valid trademark license should both provide some method of quality control by the licensor and identify upon what goods or in connection with what services the licensee is permitted to use the licensed trademark. Under U.S. law, regardless of the source for the licensed products, if the trademark license does not contain quality control provisions, or if no quality control is exercised by the licensor, the licence may be considered a “naked licence.” Naked or uncontrolled licensing may result in:

1. abandonment of rights in the mark;
2. a break in the chain of continuous use necessary to prove priority of use over another;
3. a finding that the license is void;
4. a finding that the licensor is stopped from challenging the licensee’s uncontrolled use.

3.2. Dilution by third parties (blurring)

The classic case of dilution is dilution by blurring, where the same mark is used more than one producer to identify different products. For famous marks, no likelihood of confusion is required. In these cases, there is not a likelihood of confusion, but the distinctiveness of the mark is diluted because consumers will associate the mark with more than one producer or product. The distinctiveness of a trademark is its value. If a mark is not distinctive, it cannot build goodwill for the name.
Laws which address trademark dilution are focused on two issues. The first is consumer protection. When consumers purchase a trademarked product, they are choosing it for a particular reason such as quality. If a competing company uses a similar mark with the intent of confusing consumers, this can undermine consumer confidence. Trademark dilution also hurts companies, by lessening the powerful impact of their brand.

3.3. Dilution by tarnishment

In the case of tarnishment, a company’s mark may be associated with an unsavoury or poor quality product. As a result, consumers develop a negative image of the company concerned. The issue of tarnishment is often linked with pornography and other explicit art forms, since many companies with a wholesome image do not want to be associated with adult material. Tarnishment is a slippery slope, since sometimes the use of a trademark is considered parody, and it cannot be prosecuted in a court of law. The national trademark laws usually provide protection against dilution by tarnishment. If a registrant does not police and protect their mark against dilution, they will lose the distinctiveness of their mark (even though their registration will not be cancelled).

3.4. Assignment in gross

A trademark is merely a symbol of goodwill; it has no independent significance apart from and cannot be sold without the goodwill it symbolizes.
When someone assigns (i.e., sells) his trademark without the necessary transfer of goodwill associated with the mark (the value and name recognition) than we have an assignment in gross. Such assignment is not considered enforceable or valid and it will be deemed as abandonment of the trademark and neither party will have any rights in the mark.

To avoid this from happening, an assignment must include the underlying goodwill. Most courts have interpreted this as a requirement that the assignor sells its related underlying assets, so as to ensure that the standards of quality remain the same (for example, a valid assignment might include the assignor selling the equipment it uses for making the related goods that are sold with the trademark, or the details of how to make those goods). What, specifically, should be included in a trademark assignment varies on a case-by-case basis.

Regardless of this rule, however, trading in trademarks per se has always been a custom in the business world. Generally, this trade has been conducted “through a widespread ignorance” or by “making the most of the exceptions” recognized by the law. Trademark practices have provided instruments to minimize, if not legally overcome, the effects of putting a ban on such assignments in gross.

The development of the consumer society over the past decades and the growing role of trademarks in the economy only have accelerated this trend. It is mirrored also in the fact that many countries permit assignments in gross, i.e. without goodwill.

3.6. Failure to police

Trademark owners often make the mistake of assuming that once they acquire a trademark registration, they are protected. Having a registered trademark does not automatically protects it, since the use of a trademark has to be “policed”, i.e., the trademark owner is obligated to locate and investigate unauthorized uses of the mark. Not doing so, the owner risks losing the mark.

Trademark laws place the burden of policing a mark on the owner. It is his responsibility to monitor the marketplace and to take legal action if find that someone has used his registered trademark without permission, or if come across a trademark or a trade name that is confusing with his mark. However, preventing imitation by competitors is not the only reason for policing a trademark. If trademark owner’s business becomes successful, the mark may be in danger of becoming a generic term.

While a trademark owner need not pursue every infringing use of its trademark, he must pursue infringers to the extent necessary to ensure that the mark does not lose its distinctiveness and does not become diluted by widespread use.

1.5. Genericide

Misuse or not proper care of a trademark, as discussed in Section 2, can make it generic, and to result in its loss. Genericide frequently arises where the challenged mark was the first product of its kind on the market. Genericide usually comes up in two contexts:

a) Litigation, when a registrant challenges another’s use of the mark only to have their mark cancelled for being generic by a court;
b) Cancellation, when a challenger can offensively seek to cancel a mark for being generic in an attempt to avoid litigation.

In both cases, the decision is made on a case-by-case basis.

4. Non-use of the trademark

With proper maintenance, trademark rights – unlike copyright and patent rights, can last permanently. However, the period during which a registered mark is subject to cancellation for non-use starts to run from different points in different jurisdictions. In some countries, this can be the date of the initial trademark application or registration; in others the cessation of last use; or the period may be counted backward from the date of the initiation of the nonuse action. Some systems also provide “dead period” before the commencement of a nonuse action during which resumption of use by the registrant will not be taken into consideration.

United States

The U.S. trademark system is based on use, not registration. As a result, the only way to attack a trademark right of another when non-use can be established is also to show abandonment. Both federally registered marks and common law marks (marks arising through use without registration) may be attacked on the ground of abandonment. Insofar as federally registered marks are concerned, abandonment occurs under section 45 of the

Trademark Act when use of a mark “has been discontinued with an intent not to resume such use. Intent not to resume may be inferred from the circumstances.” Nonuse for two consecutive years constitutes “prima fide evidence of abandonment” under this section.

In determining the question of use or nonuse, the section stipulates that “‘Use’ of a mark means the ‘bona fide’ use of that mark made in the ordinary course of trade, and not merely to reserve a right in a mark.” Thus, section 45 of the American statute requires first a showing of nonuse. If non use is established, an additional showing of intent not to resume use is required.

Common law trademark rights arising from use alone apart from any registration may be abandoned in one particular geographical region of the United States but remain in force in another area.

To prevent abandonment in the face of two years of non-use, the registrant must come forward with evidence of an intent to resume use sufficient to rebut the presumption of an intent not to resume use. Although such evidence may include marketing plans, market tests, or similar activities that do not constitute actual use, the evidence must be relevant to the period of non-use.

It is not sufficient to show such efforts after the mark has been abandoned. Moreover, trademark rights in the U.S. are contingent upon continued use of the trademark and filing of Section 8 affidavits and renewals. A Section 8 affidavit must be filled between the 5th and 6th year after the date of registration and in the year prior to the end of each registration term.

This filing affirms that the trademark is still being used in commerce in connection with all or some of the goods and services specified in the original registration. An application for renewal must be filed in the year prior to each registration term. Both the Section 8 affidavit and renewal application may be filed up to six months late with the payment of an additional “grace period” fee. In addition, once a trademark registration becomes five years old, you can obtain incontestability status by filing a Section 15 affidavit with the USPTO. The registration then becomes much stronger, as an incontestable registration can be challenged on fewer and narrower grounds than one that has not achieved incontestable status.

Canada

In Canada, trademark rights fundamentally depend on the trademark owner’s continued use of the mark. In this context, “use” has a special meaning, namely: products must be marked with the trademark when the product is sold in the ordinary course of trade, or, for services, the mark must somehow be displayed when the services are performed. Section 18(1)(c) of the Trade Mark Act provides that a registration is invalid if the trademark has been abandoned.

At any time, ex officio or upon the request of “any person”, after three years from the date of registration, the Canadian Register may issue a notice to a trademark registrant requiring the filling of an affidavit or declaration showing whether the mark is in “use in Canada” or if the mark is not in use, to provide a satisfactory explanation to the Registrar for the non-use [Section 45]. The Notice is called a section 45 notice.

If the registrant does not file a satisfactory affidavit or statutory declaration, the Register has power to cancel the registration. Section 45 can be used by anyone who thinks a trademark is no longer in use by its owner. Once the application and filing fee have been submitted, the applicant does not need to do anything else. The Registrar takes care of all the remaining steps of the procedure.

Australia

Under Australian law for a person to validly claim they are the owner of a trade mark they must use that trade mark in the course of trade. Section 92(4)(b) of the Trade Marks Act allows for a non-use application to be made provided the trade mark has been registered for at least five years. The non-use application may be for full removal of the trade mark or for partial removal. Full removal means the trade mark will no longer be registered. Partial removal means the trade mark will remain registered but for fewer goods and/or services. Any person may apply for removal of a trade mark for non-use.

A non-use application may not be filed with IP Australia if there is court action taking place in relation to the trade mark. Such court action could be a claim by the registered owner of the trade mark that another party has infringed its trade mark. However, if court action is taking place, an application may be made to the court for an order directing that the trade mark be removed from the Register.

United Kingdom

Section 26(1)(b) of the British Act provides that a registration is subject to cancellation following a “continuous” period of five years nonuse ending one month preceding the initiation of the cancellation action. Section 26(1)(a) provides that a registration is subject to cancellation at any time if the registrant had no “bona fide” intention to use the mark at the time of filing and there has been no such use of the mark up to one month before commencement of cancellation action.

Thus, if there is no bona fide intent to use the mark and there is no use, a cancellation action may be brought by a challenger at any time. Registrations in British law countries are most frequently attacked on this ground where they cover goods not encompassed by the registrant’s business, but this fact alone does not necessarily mean the registrant lacked the requisite intent. If there was a bona fide intent to use the mark initially, an action under section 26 of the British Act cannot be brought against a registration until it is five years plus one month old. Thereafter, the user term is calculated backward from the initiation of the nonuse action.

Trademarks renewal, opposition and cancellation rules

Renewal For 10-years term.

• Request for renewal can be filed before and after 6 months from due date.
• After that time restoration may be requested.
• Trademark can be altered without affecting the identity of the mark For 10-years term.
• Affidavit of Continuing Use is due at year five (5) or the USPTO will cancel the trademark.
• For every 15 years upon payment of a renewal fee
• For every 10 years upon payment of a renewal fee.
• Opposition Within 3 months from publication Within 30 days from publication of the application or within limited extensions previously obtained Within 2 months from publication Within 2 months from publication

Cancellation (1) 5 years non-use ending 1 month preceding the initiation of the cancellation action;

(2) at any time if the registrant had no “bona fide” intention to use the mark at the time of filing and there has been no such use of the mark up to one month before commencement of cancellation action 2 years non-use from date of registration 5 years non-use from date of registration 3 years non-use from date of registration

5. Trademark infringement and litigation

If a trademark owner finds a conflict, the first step is to write a letter to the infringer demanding that it discontinue use of the mark. If the demand letter fails, litigation is the only alternative. Failure to take action may result in loss of rights. The law does not allow a trademark owner to pick and chose which infringers it files suit against. If he fails to take action against the first infringer but do against a second, a court may hold the second case that the trademark owner has given up or waived its rights by not filing suit against the first infringer.

5.1. Basic elements of trademark infringement

The term “infringement” means the unauthorized use of a trademark without the trademark owner’s permission. The first step requires the court to determine whether the plaintiff has a protectible right in its mark. A mark is protectible if it either (1) is inherently distinctive, i.e., distinctive, arbitrary, or coined, or (2) the mark has acquired a secondary meaning. If the plaintiff has a protectible mark, the second step is to determine whether there is infringement. Infringement is found where there is a “likelihood of confusion” between the protectible mark and the challenged mark.

5.2. Determining confusion

When a court attempts to sort out trademark dispute, the most important issue is often whether customers are likely to be confused regarding the origin or sponsorship of the products. In determining if there is confusion courts use the following factors are relevant:

1) the type of trademark allegedly infringed;
2) the similarity between the two marks;
3) the similarity of the products or services;
4) the identity of the retail outlets and purchasers;
5) the identity of the advertising media used;
6) the defendant’s intent;
7) any evidence of actual confusion;
the degree of care employed by consumers;
9) the extent and nature of the changes made to the product;
10) the clarity and distinctiveness of the labeling on the rebuilt product;
11) the degree to which any inferior qualities associated with the reconditioned product would likely be identified by the typical purchaser with the manufacturer.

No one factor is dispositive, and a finding of a likelihood of confusion does not even require a positive finding on a majority of these factors. In addition to the listed factors, a court is free to consider other relevant factors in determining whether a likelihood of confusion exists.

5.3. Types of trademark infringement

Causes of action for trademark infringement are based on products and services that use confusingly similar trademarks in the same or similar markets. The touchstone of the infringement inquiry is whether the consuming public would be confused as to the source of the goods or services based on the defendant’s actions in the market.

While other causes of action in trademark law may be available if the similarity of marks and goods or services is not substantial, the claim for infringement of a trademark registration will depend in large part on the similarity of the marks on competing items in the market. The most widespread trademark infringements are:

a) Dilution
b) Blurring
c) Tarnishment
d) False designation of origin
e) Palming off and reverse palming off
f) Unfair competition
g) Counterfeiting
h) Damages (injunctions, monetary, statutory damages, lost goodwill)

III. Appendix

a) Websites for trademark-related organizations

• World Intellectual Property Organization (WIPO) http://www.wipo.int/trademarks/en/
• International Trademark Association (ITA) http://www.inta.org/
• The Patent and Trademark Office Society http://ptos.org/index.php
• The Institute of Trade Mark Attorneys (ITMA) http://www.itma.org.uk/
• The Institute of Patent and Trade Mark Attorneys of Australia http://www.ipta.com.au/
• American Intellectual Property Law Association http://www.aipla.org/Pages/default.aspx
• Intellectual Property Institute of Canada http://www.ipic.ca/
• European Communities Trade Mark Association (ECTA) http://www.ecta.org/
• The Intellectual Property Lawyers Organization (TIPLO) http://www.tiplo.org/
• The Association of European Trade Mark Owners (MARQUES) http://www.marques.org/
• The EU Office for harmonization in the Internal Market (Trade Marks and Designs) http://oami.europa.eu/ows/rw/pages/index.en.do

b) Websites for trademark-related national institutions

• United States Patent and Trademark Office (USPTO) http://www.uspto.gov/
• IP Australia http://www.ipaustralia.gov.au/
• The UK Intellectual Property Office http://www.ipo.gov.uk/
• Canadian Intellectual Property Office http://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/h_wr00002.html

c) Websites for trademark-related databases

• USPTO Trademark Data http://tess2.uspto.gov/
• Australian Trade Mark On-line Search System http://pericles.ipaustralia.gov.au/atmoss/falcon.application_start
• Canadian Trade-mark Database http://www.ic.gc.ca/app/opic-cipo/trdmrks/srch/tmSrch.do?lang=eng
• The UK Trade Mark Enquiry http://www.ipo.gov.uk/tm/t-find/t-find-text/
• EU Trademark Database http://www.oami.europa.eu/ows/rw/pages/QPLUS/databases/searchCTM.en.do