6 Things You Must Know About Your Trade-Mark: Part 4

We’ve talked about registered and unregistered trade-marks in the first instalments of this series. This post will concentrate on the registered variety. Specifically, do you need to do anything after registration to protect your rights?

Unsurprisingly the answer is yes, for too many reasons to go into now. What we will concentrate on is using a watching service as an early warning of infringement.

We probably won’t get through any of the 6 articles in this series without emphasizing the importance of use to trade-marks. For instance, when deciding which of two identical or confusingly similar marks has priority the one used earlier will almost always prevail. But that doesn’t mean the earlier party can just relax even if it knows it is first.

There are plenty of examples where someone, knowingly or unwittingly, used a trade-mark for a long period of time despite it being registered earlier by someone else. The internet has made that less of a problem because it is now much easier to search for similar marks that are in commercial use. But it is still possible that someone could use a mark for months or even years without the registered owner knowing about it.

If the owner does find out, it will usually rely on the Trade-marks Act to claim priority and shut down the other user. There is a catch, though. Under the Act, a registered owner cannot claim prior use against someone who has used the mark for more than five years. After 5 years there may be other grounds for one challenging the other but priority of use is not one of them.

This is a serious advantage to give up so registered owners will want to do two things. First, usually during the registration process, they will do as exhaustive a search as they can to find similar marks even if they were used after the proposed registrant. If the 5 years has not passed, they have a powerful and relatively simple angle of attack.

After registration the key defence is a watching service. The name is descriptive enough. A third party is contracted to periodically search for similar or identical marks. If any are found, the registered owner can then take legal steps to stop or minimize the usage by the other party.

Watching services can be done by the owner itself but usually only the biggest companies do it in-house. Most will hire one of the numerous parties that perform the service on their behalf. Good “watchers” have resources and expertise to ferret out all information.

Some watches are simple. The Canadian Intellectual Property Office publishes the Trade-marks Journal every week. All trade-mark applications are publicly disclosed as part of the process and the Journal is the vehicle. Available in electronic form, the Journal is a must to review if you are protecting a valuable trade-mark. It is much easier to attack a proposed mark before registration than after so finding these applications early is an advantage.

Watching services can also go further afield into more ambiguous searches. They may search incorporation databases, business directories and other sources of data to find names which are similar. There isn’t a one stop shop for these searches so this is where a watching service’s expertise is important. Some are more skilled than others in combing through vast swaths of data.

Watches do not have to occur every day. Every 6 months or a year is usually enough but there are exceptions. Some industries or products might demand a different schedule. Also, the ­Journal searches should be done more often since there is only a few months from advertising to approval.

Using a watching service is not a luxury limited to major trade-marks. Most registrations should have some sort of external review going on to make sure there are no competing marks arising. There is a cost, of course, but it is not excessive. Consider it maintenance of the asset that may be the most valuable component of your business.