Sarah Hébert-Tremblay, Johanne Auger
Unlike other intellectual property assets like patents and copyrights, trademarks do not have an expiry date in Canada, if they are used. Thus, the value of a trademark can perdure and even increase over time, provided the owning company actively prevents third parties from using an identical or confusingly similar mark!
A company that owns a trademark and allows other companies operating in the same field to use identical or similar trademarks would see the distinctiveness of its trademark diluted in the market. This can lead to the loss of rights in the trademark, making it challenging to take legal action against third parties using a similar trademark. As a result, the company’s market share and revenue may be adversely affected. Indeed, a trademark serves as an indicator of the source of the goods and services in association with which it is used, and it is crucial to keep it unique. If consumers can no longer identify it with a single source, but with numerous sources, its value becomes compromised.
A pertinent example of this scenario can be seen in Gentec v. Nuheara, 2022 FC 1715. In this case, Gentec owned the IQ trademark, registered for headphones, among other products, and sought legal intervention against Nuheara's IQbuds trademark, used for hearing aids, claiming that this latter mark was confusing with its own.
Nuheara responded to this action by attacking the validity of Gentec's mark on the basis that IQ, as a trademark, was weak, due to several other similar marks associated with electronic products in the market. Nuheara based its arguments primarily on examples of marketed products, including headphones, using trademarks that contained the term IQ in Canada, articles where the term IQ was used generically to refer to electronic products, and a list of registered trademarks and trade names in the field of electronic products including the term IQ.
The Court ruled in favour of Nuheara, concluding to a loss of distinctiveness due to the widespread use of the term IQ, and declaring Gentec’s IQ trademark invalid.
To establish and protect trademark rights while deterring potential use by third parties, it is advisable to consistently identify the trademark as such by using the recognized symbols. The symbols TM (trademark) or MC (marque de commerce) shouldbe used for unregistered, pending or even registered trademarks, whereas the symbols ® (registered) or MD (marque déposée) should be used exclusively for registered trademarks.
However, maintaining the distinctive character of a trademark and the rights it carries requires active monitoring of the market. This ensures that the trademark or similar marks are not being used by third parties. If a problematic trademark used by a third party is spotted in connection with the same type of goods and services within the same geographical territory, it is essential to determine whether action should be taken to stop its use or oppose its registration in the event an application has been filed by a third party.
Our team can set up a trademark watch service to keep you informed of any applications for registration of identical or similar trademarks filed by third parties in Canada as well as in any other relevant jurisdictions.
Let our intellectual property team assist you in developing a strategy to protect and monitor your trademarks in Canada and abroad.
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