0:07 [Music]
0:10 hi I'm Emily fel Fraser an intellectual
0:13 property lawyer at Galan wlg based in
0:17 Vancouver BC hi I'm Laurie Hall Trey my
0:19 partner at galleon wlg in the Hamilton
0:22 office welcome to our go excel module on
0:26 trademark basics for startups if you're
0:27 running a small business you likely
0:29 develop a business name or brand to
0:30 establish and distinguish your goods and
0:33 services in the marketplace
0:35 it's not all about fancy logo design
0:37 though did you know you can get
0:39 exclusive rights to your brand in Canada
0:42 if you register it as a trademark did
0:44 you also know that if you don't check to
0:46 see what else is out there there is a
0:47 risk that your newly developed brand
0:50 could be infringing on another entities
0:53 already existing trademark rights today
0:54 we're going to guide you through the
0:57 following topics first we'll give you a
0:59 brief overview of trademark law and
1:01 what's important for your business then
1:02 we'll walk through the steps for
1:04 developing a strong trademark including
1:06 the due diligence you should conduct and
1:08 finally we'll give you a checklist of
1:09 what you'll need to put together for a
1:12 trademark application trademark due
1:14 diligence and protection might seem like
1:16 a low priority when there's so much on
1:19 your business to-do list but putting in
1:21 a little effort now will likely save you
1:23 lots of time and money down the road
1:26 just remember that our discussion state
1:28 isn't intended as legal advice we
1:30 recommend contacting a trained
1:31 professional before proceeding with any
1:39 first of all what is a trademark
1:41 technically speaking a trademark is any
1:44 word symbol design slogan sound or
1:45 combination of these elements that
1:47 distinguishes your business's goods or
1:49 services from those of others in the
1:53 marketplace Google Kodak Sony Nike these
1:55 are a few examples of trademarks that
1:56 immediately call to mind the goods and
1:58 services that are associated with a
2:01 trademark allows a consumer to link a
2:03 good or service of the stores and can
2:05 also be about your quality based on the
2:06 goodwill and reputation that the source
2:09 has acquired a trademark particularly a
2:11 registered trademark adds value to a
2:13 business and can help leverage goodwill
2:16 for new product lines or services what
2:17 kinds of rikes
2:20 come with the trademark simply by using
2:22 a trademark under Canadian trademark law
2:25 owners generally considered to acquire
2:27 certain rights in a trademark these are
2:29 usually called common law trademark
2:30 rights because they are acquired
2:33 automatically through use however these
2:35 rights are often geographically limited
2:38 in scope and can be difficult to enforce
2:41 by contrast registering a trademark
2:43 gives the robust rights and protection
2:45 if you retain a trademark registration
2:47 in Canada you have the right to
2:49 exclusive use of the trademark
2:52 throughout Canada in perpetuity provided
2:53 the trademark continues the improper use
2:56 and renewal fees are paid every 10 years
2:58 this means that you can stop other
3:00 people anywhere in Canada from using a
3:02 trademark that's the same or confusingly
3:09 so how do you apply for trademark you
3:10 must apply to the Canadian Intellectual
3:12 Property Office to register a trademark
3:15 the application process in Canada
3:17 usually takes about two years and there
3:19 are quite a few steps involved which is
3:21 why it's a good idea to get a trade more
3:24 professional to help you your trademark
3:25 effective professional can also help you
3:27 file corresponding trademark
3:30 applications in other countries where
3:31 once registered you will get similar
3:33 protection according to the laws of
3:36 those jurisdictions through your
3:39 trademark register ball not all
3:41 trademarks are available or registered
3:44 for example if another entity is using
3:46 or has registered trademark in Canada it
3:48 has the same or confusingly similar to
3:50 your trademark and it's associated with
3:52 goods and services that might overlap
3:53 with yours your trademark will not
3:56 likely be register ball there are other
3:58 reasons a trademark might not be reg
4:01 tubal for example if the mark is
4:04 primarily merely a surname if it is
4:06 clearly descriptive of the associated
4:09 goods or services if it's a geographic
4:11 location and is clearly descriptive or
4:12 miss descriptive of the origin of the
4:15 associated goods or services or the mark
4:18 is superlative it might not be register
4:21 ball marks like Frazier's foods
4:25 Vancouver clothes or the bus would not
4:27 likely be register without evidence
4:29 these marks had acquired distinctiveness
4:32 in Canada there are also certain other
4:34 marks that relate to universities or
4:37 government bodies which are prohibited
4:40 that's why it's very important to do
4:42 some due diligence on your trademark
4:44 upfront before you invest lots of time
4:47 and money into developing it as a brand
4:49 your due diligence will help you find
4:51 out whether your trademark might be
4:53 infringing another entity's existing
4:55 trademark rave and secondly whether it's
4:58 likely registerable usually this new
4:59 diligence takes the form of searches
5:02 searches of the trademarks registers of
5:03 the countries you'll do business then
5:06 Google searches domain name searches and
5:07 searches of company directories among
5:08 other things
5:10 when searching you're looking for marks
5:12 that are confusing with similar to or
5:14 identical to your proposed marks that
5:15 are being used in the same area of
5:17 business that you're currently in or
5:23 it's a good idea to get a trained more
5:24 professional to help you with these
5:26 searches because setting the proper
5:28 search parameters can be tricky it can
5:30 be difficult to find design marks or
5:32 marks that are phonetically similar but
5:34 spelled differently than your mark
5:36 depending on the results you may find
5:39 you have to tweak or pivot to use a
5:40 different trademark because the one
5:46 so how can you increase the likelihood
5:49 of register ability of your mark
5:52 the field is more likely to be clearer
5:53 the more your trademark is distinctive
5:57 keep it simple memorable and unique it
5:58 can be tempting to use descriptive
6:00 trademarks because they tend to tell the
6:02 consumer more about who you are what
6:03 goods or services you're offering or
6:05 where you're located but the more
6:07 descriptive the trademarks the more
6:08 obstacles to registration there can be
6:11 for example the trademark Joe's marina
6:13 pub has the benefit of telling the
6:16 consumer exactly who what and where you
6:19 are but it's a weak brand and may not be
6:21 registered well as a trademark by
6:24 contrast coined words like Kodak Google
6:26 Nike and Sony are the strongest
6:27 trademarks because they're inherently
6:30 distinctive but you may have to invest
6:31 more the outset educating consumers
6:33 about what kind of goods and services
6:35 you offer I certainly didn't know what a
6:37 Google was the first time I heard that
6:41 word here are six quick steps for
6:43 developing your trademark and
6:45 determining whether it likely needs the
6:48 criteria for register bility first
6:51 identify all markets and channels a
6:53 trade your business is currently in and
6:55 potentially will be in including other
6:58 countries if applicable
7:01 next identify all products and services
7:03 your business intends to sell or provide
7:06 include areas you may expand to in the
7:09 future for example will you one day sell
7:11 branded apparel provide consulting
7:14 services make sure to include them in
7:16 your list third prioritize how much you
7:18 want to communicate who you are and what
7:20 you do by way of your trademark versus
7:22 how strong a brand you want to develop
7:25 are you a Joe's marina pub or you the
7:29 next Kodak fourth brainstorm the brand
7:31 elements you want to convey do you want
7:33 to include design elements or make a
7:34 logo out of your brand
7:38 are there specific colors words ideas or
7:41 elements you want to communicate
7:43 once you have a short list of proposed
7:45 trademarks consult with the trademark
7:47 professional and conducts searches to
7:49 determine whether other entities
7:52 trademarks overlap with your proposed
7:55 trademarks or if there are other regista
7:58 khals if there are be flexible about
8:00 pivoting or reimagining your desired
8:04 trademark when you're ready engaged a
8:05 legal professional to file a trademark
8:06 application on your behalf
8:09 remember it takes a couple of years for
8:11 a trademark to issue to registration in
8:12 Canada and there can be various hurdles
8:14 along the way if you're not currently
8:16 using your trademarks the most important
8:17 date to establish your rights is your
8:20 filing date alternatively if you're
8:22 already using your trademark your rights
8:23 will be a combination of your first
8:25 youth date and your filing date in any
8:27 event it's a good idea to file as early
8:30 as you can once you've settled on your
8:33 chosen trademark and you're confident
8:36 that all potential risks have been
8:38 uncovered you are now ready to prepare
8:41 and file a trademark application
8:43 it is so important that all information
8:45 on your trademark application is
8:46 accurate filing a trademark application
8:48 with errors could result in your
8:50 inability to enforce your rights in your
8:52 trademark down the road let's go through
8:54 a checklist of the key things you'll
8:55 need to include in a trademark
8:57 application and some common mistakes to
9:00 avoid you can access the full checklist
9:04 and the link below this presentation the
9:05 first thing you need in your application
9:07 is the applicant's full name and address
9:09 if the applicant is a company this means
9:11 the full legal name of the company
9:13 including the corporate signifier like
9:16 ink or Ltd if your business structure
9:17 includes subsidiaries or other related
9:19 companies make sure the applicant is the
9:21 entity within your structure that you
9:23 want to own the intellectual property
9:26 after filing you can fix a clerical
9:27 error in the applicants name fairly
9:30 easily by way of an affidavit but it's
9:31 more complicated to fix an application
9:33 filed in the name of the wrong entity
9:36 your application must include a visual
9:38 representation or description of the
9:41 trademark if your trademark is a
9:43 standard character mark which means it's
9:46 comprised only of words letters numbers
9:49 punctuation marks or other standard
9:51 characters you might find in a keyboard
9:53 your application must include a visual
9:56 representation of the trademark in black
9:58 and white on a background and a
10:00 statement that it is a standard
10:02 character mark
10:04 if your trademark is a design mark which
10:07 means it includes a logo stylized
10:09 characters or other design elements your
10:11 application must include a picture of
10:14 the mark not exceeding 8 centimeters by
10:16 8 centimeters if the design mark
10:19 includes a color the names of the colors
10:22 must be specifically described and the
10:24 visual representation must include those colors
10:26 colors
10:28 don't file the application for the wrong
10:30 trademark if you follow the wrong
10:32 spelling of your trademark or the wrong
10:34 logo design your chamber could be
10:37 cancelled for non use similarly if you
10:38 wish to sue another party for
10:39 infringement and you discover that the
10:41 trademark on your registration document
10:43 is not consistent with how you've used
10:45 your trademarks it could be much more
10:46 difficult for you to enforce your rights
10:49 using that registration you can't
10:51 correct the visual representation of the
10:53 trademark once it's filed if it's wrong
10:54 you have to start fresh with a new
10:56 application if you plan to use your
10:59 trademark in both the standard character
11:01 and design format in other words if you
11:04 have both a word mark and a logo you may
11:06 want to consider filing multiple
11:08 trademark applications for example one
11:10 for the word mark and one for the logo
11:12 as each type of trademark will entitle
11:14 you to a different scope of protection
11:16 and a different set of register bility
11:18 criteria we recommend asking your
11:21 trimmer professional for help with these
11:26 another thing you need to include in
11:27 your trademark application is a
11:29 statement and ordinary and commercial
11:31 terms describing the goods and services
11:32 that your trademarks associated with
11:35 this includes goods and services your
11:37 business currently offers as well as
11:39 goods and services your pay offer in the
11:42 future remember you can always narrow
11:43 the scope of your trademark application
11:49 your statement would alt must also be
11:51 very specific a statement that your
11:53 trademark is associated with clothing
11:55 for example is not enough you need a
11:58 list of specific types of clothing you
12:00 plan to brand with your trademark your
12:02 lawyer or trademark agent can help you
12:04 draft a compliant statement of goods and
12:08 services in ordinary commercial terms
12:11 as of June 17th 2019 the goods and
12:13 services in all Canadian trademark
12:14 applications must be classified
12:15 according to an International
12:18 classification system called the NYSE
12:21 classification your camera professional
12:23 can help you categorize each of your
12:24 goods and services into the proper neath class
12:27 class
12:29 the fee is associated with your
12:31 trademark application will depend on the
12:33 number of these classes in your
12:36 application the base fee charged by the
12:38 Canadian Intellectual Property Office is
12:40 three hundred and thirty for the first
12:42 class of goods and services and one
12:44 hundred for each additional class
12:46 these numbers exclude legal fees and
12:50 disbursements as these fees can quickly
12:52 add up it's better to have a focused
12:54 application that is practical about the
12:55 goods and services that you're claiming
12:57 rather than an application that's over
12:59 broad this will also help prevent your
13:01 registration from being cancelled down
13:03 the road it but turns out you're not
13:04 using trademark on the goods and
13:12 Canada may not be the only country you
13:13 want to sleep trademark protection in
13:16 luckily there's an international treaty
13:17 called a Madrid Protocol that
13:19 streamlines the process of filing
13:21 concurrent trademark applications in
13:23 other member countries many key
13:25 strategic jurisdictions are members of
13:25 the brigade's
13:27 protocol including the United States the
13:30 European Union and the United Kingdom if
13:33 you file in other countries within six
13:35 months of your fight of filing your
13:37 Canadian application you can claim
13:39 priority in the foreign jurisdictions to
13:42 your Canadian filing date if you're not
13:44 ready to file trademark applications and
13:47 foreign just jurisdictions that soon you
13:49 can always file them after the six-month
13:52 window is up it just means you will be
13:54 able to claim the benefit of the earlier
13:57 Canadian filing date instead the filing
13:59 date will be designated as the date your
14:01 foreign application was actually filed
14:03 whether you're claiming priority or not
14:06 be aware that other jurisdictions may
14:08 require additional application criteria
14:10 such as proving use of the trademark in
14:12 that country before your trademark is
14:14 registered and that's it thanks for
14:15 joining us today
14:16 Lori and I hope we've been able to
14:18 provide you with some guidance on the
14:19 selection of trademarks the risks
14:21 involved and some practical tips for
14:24 filing a trademark application if you
14:26 want to learn more check out my article
14:28 Trey my basis for startups which
14:29 summarizes the key principles we talked
14:31 about today you'll find a link to the
14:33 article above this presentation as well
14:35 as a downloadable PDF copy of Laurie's
14:37 trademark application checklist we went
14:42 if you'd like to explore other
14:45 intellectual property topics we
14:46 encourage you to visit our go excel
14:49 homepage to gain early access to other
14:51 videos like ours on our virtual IP platform
14:53 platform
14:55 and don't hesitate to get in touch with
14:56 either one of us directly if you have
14:58 any questions we're here for you and
15:02 we're happy to help thanks again [Music]
