Protecting Your Trade-Mark Rights: Police Them or Lose Them
Our friends at Ink Tank posted a great blog the other day about how other businesses can “tread” on your brand – knowingly or not - from “borrowing” distinctive elements of your brand, to unwelcome parodying to blatantly infringing your trade-mark.
All of these things can do harm to your brand and to your business. And they can do so in different ways, some more obvious than others. Obviously, if a direct competitor is using a brand name or a logo that is very similar to yours in order to appropriate your goodwill and your customers, that’s going to be harmful (it can result in a direct loss of sales). Less obvious is the harm that can be done to your brand if a non-competitor – say, someone in a different part of the country or in a slightly different line of business – adopts a confusingly similar brand name or “borrows” the distinctive elements of your brand.
Understanding how your brand can be damaged when others “tread” on it is important to knowing when you should consider legal action. Enforcing your trade-mark rights (or “policing” as it’s sometimes called) is critical to protecting your brand. In fact, if you don’t police your brand, or if you do it ineffectively, you are not only jeopardizing the strength and integrity of your brand, but you are also jeopardizing your legal rights to protect it at all – that is, the ability to stop others from ripping it off.
Put simply, if you don’t police your trade-mark rights, you will lose them.
Why is that? It’s because a trade-mark is only a trade-mark (from a legal perspective) if it’s distinctive of you as a trade source. If others in the marketplace are borrowing elements of your trade-mark to sell their own wares or services, then eventually your trade-mark will no longer be distinctive of you. Once that happens, you can’t stop your competitors from using it, or at least the elements of it that consumers no longer associate exclusively with you.
That is why you will hear a lot of the same advice from a trade-mark lawyer as you will from a brand consultant. Both will talk about the importance of being distinctive through consistent use of a strong brand. From a branding perspective, distinctiveness is what gives you muscle in the marketplace. From a legal perspective, distinctiveness is what gives you muscle against infringers in the courtroom.
Imagine seeing the trade-mark, MacDimsum or McDimsum, being used as a brand for Chinese style fast food. Chances are you would think of McDonald's restaurants. At least that’s what the Federal Court of Canada concluded recently in Tong G. Cheah v. McDonald’s Corporation, 2013 FC 774. On that basis, it rejected an individual’s attempt to register MACDIMSUM in association with “prepared food and drinks of the sort that one might find in a Chinese or other Oriental restaurant”. The reason that McDonald’s could prevent this person from registering MACDIMSUM as a trade-mark was because the prefixes “Mc” and “Mac” have become so distinctive of McDonald's in Canada. This would not be the case if McDonald’s did not aggressively police its trade-marks by going after everyone who tries to use those prefixes with food or restaurant services – even small businesses that clearly present no competitive threat. If there had been evidence of others using “Mc” or “Mac” to sell food products in Canada then the case would very likely have had a different outcome.
There are various ways to police your brand. It doesn’t have to be through suing people. It can be as simple as putting another party on notice of your rights or proposing terms under which you can each “co-exist” – e.g. I’ll stick to these products in this market if you stick to those products in that market. And even if your policing efforts have little or no impact on what others do, they may well have an impact in the courtroom if you end up there. The court will be more likely to help you if it sees that you’ve at least attempted to help yourself by maintaining the distinctiveness of your brand.
It is a good idea to consult a trade-mark lawyer or a branding expert when choosing a brand at the outset. They can help you choose a brand that is and can remain distinctive and easy to police. They can also tell you how to use it in a way that will maintain its strength and your ongoing ability to protect it.