In my previous blog, Benefits of Registering a Trademark, I discussed why trademark registration is a valuable investment that a business can make to protect its brand. However, obtaining a registration certificate is not the end of the process. A trademark is an asset that requires ongoing attention, including proper use, monitoring, maintenance, and enforcement. In this article, I explore the key steps trademark owners should take after registration to preserve and maximize the value of their trademark rights in Canada.
Exclusive Rights: What Does Trademark Registration Mean?
A registered trademark grants its owner the exclusive right to use the mark throughout Canada in association with the goods and services covered by the registration.
In practical terms, this means that no one else can use the same trademark, or a trademark that is confusingly similar, in a way that could mislead consumers about the source of the goods or services. Registration also provides a presumption of ownership and validity, making it easier to enforce your rights against infringers.
However, trademark rights are only as strong as the owner’s willingness to protect them.
Enforcing Your Rights
Trademark owners are responsible for policing their marks. If you become aware of a third party using a confusingly similar trademark, taking prompt action can prevent consumer confusion and protect the distinctiveness of your brand.
Send a Cease-and-Desist Letter
Often, the first step is a cease-and-desist letter. Such a letter typically informs the other party of your trademark rights, explains how their activities may infringe those rights, and requests that they stop using the mark.
Many disputes can be resolved at this stage without the need for costly litigation.
Commence Legal Proceedings
If informal efforts fail, it may be necessary to start a legal action in court. Depending on the circumstances, a court may order the infringing party to stop using the mark, destroy infringing materials or pay damages.
Legal action should generally be considered after evaluating the strength of your position and the commercial significance of the dispute.
Use Border Enforcement Measures
Trademark owners can also seek assistance from the Canada Border Services Agency (CBSA). By filing a Request for Assistance, rights holders can help border officers identify and detain suspected counterfeit goods entering Canada.
This can be an effective tool for preventing counterfeit products from reaching the Canadian marketplace and damaging your brand.
Challenge Conflicting Domain Names
A trademark registration may also help you address problematic domain name registrations. If a third party registers a domain name that incorporates your trademark or is confusingly similar to it, you may be able to challenge the registration through applicable dispute resolution procedures by the Canadian Internet Registration Authority (CIRA) or court proceedings.
Early action is often important to prevent consumer confusion and protect your online presence.
License Trademark Use to Affiliates and Third Parties
Many trademark owners allow related companies, distributors, franchisees, licensees, manufacturers, or other business partners to use their trademarks. While this can be an effective way to grow a brand, it is important to ensure that any third-party use is properly documented through a written license agreement.
The owner of the mark must maintain control over the character and quality of the goods and services offered in association with it. A well-drafted license agreement helps demonstrate that the trademark owner retains this control while clearly setting out the scope of the permitted use, quality standards, territory, duration, and other important terms. Failure to properly document licensed use can create uncertainty about ownership rights and may weaken the trademark owner’s ability to enforce the mark against third parties.
Maintaining Your Trademark Rights
Trademark registration is not a “set it and forget it” process. Ongoing maintenance is essential.
Start Using Your Mark as Soon as Possible
If you haven’t started using the mark before registration, it is important to begin using your trademark in Canada as soon as possible. Under section 45 of the Trademarks Act, after three years following registration, third parties may request that the trademark owner provide evidence showing that the mark has been used during preceding 3-year period.
If sufficient evidence of use cannot be provided, the registration may become vulnerable to cancellation in whole or in part.
Keep Records of Trademark Use
Maintain clear records demonstrating how your trademark is used in the marketplace. Useful evidence may include:
- Invoices
- Sales records
- Product packaging
- Labels
- Advertising materials
- Website screenshots
- Product photographs
These records can be invaluable in responding to section 45 proceedings. They may also assist in establishing priority and defending your rights against competing claims.
Track Registration and Renewal Deadlines
A trademark registration does not last indefinitely without maintenance. Be sure to record all important dates, including renewal deadlines, in your calendar.
Missing a deadline can result in expungement of the trademark.
Act Against Confusingly Similar Marks
Do not ignore third-party uses that may conflict with your trademark. Allowing confusingly similar marks to coexist for extended periods can weaken the distinctiveness of your brand and make future enforcement more difficult.
Prompt action helps preserve the strength and exclusivity of your trademark rights.
Keep Your Contact Information Current
Remember to notify the Canadian Intellectual Property Office (CIPO) and your trademark agent of any changes to your contact information, including addresses and ownership details.
Accurate records help ensure that important notices reach you in a timely manner.
Monitor Communications from CIPO
Continue monitoring correspondence from CIPO after registration. Trademark owners may receive notices relating to section 45 proceedings, ownership matters, or other issues affecting the registration.
Remaining attentive to official communications can help you address potential problems before they become serious.
Final Thoughts
A trademark registration is a powerful tool, but it is only the foundation of an effective brand protection strategy. By actively using your trademark, maintaining evidence of use, monitoring the marketplace, and enforcing your rights, when necessary, you can maximize the value of your registration and protect one of your business’s most important assets.
Think of trademark registration not as the finish line, but as the beginning of your trademark’s lifecycle. Proper stewardship today can help preserve your exclusive rights for years to come. If you have questions about protecting or enforcing your trademark after registration, contact the intellectual property team at Mills & Mills LLP for guidance on trademark maintenance, licensing, monitoring, and enforcement strategies tailored to your business needs.
At Mills & Mills LLP, our lawyers regularly help clients with a wide range of legal matters including business law, real estate law, estate law, employment law, health law, and tax law. For over 140 years, we have earned a reputation amongst our peers and clients for quality of service and breadth of knowledge. Contact us online or at (416) 863-0125. The material provided through the Mills & Mills LLP website is for general information purposes only. It is not intended to provide legal advice or opinions of any kind.
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