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A record with an Apple Corps logo is seen placed on the top of an Apple computer with its logo, top left, in London in this March 29, 2006, file photo. (SANG TAN)
A record with an Apple Corps logo is seen placed on the top of an Apple computer with its logo, top left, in London in this March 29, 2006, file photo. (SANG TAN)

Start: Tony Wilson

Don't leave branding to the lawyers Add to ...

One of the benefits of being a franchise and trademark lawyer is that I seem to act for a lot of hotels and restaurants. And despite my sage advice that they should see “branding experts” to develop branding strategies when they start up, they sometimes rely on me to name their businesses when they can't come up with anything catchy enough.

This might be because I speak English good. I have named at least four restaurants in Vancouver during my long and uninsured career as a “wannabe branding guru,” and I have prevented at least one restaurant from being given the name of a very rude word in Tagalog. Many Vancouver residents have eaten in “my” restaurants, but since there is no plaque celebrating my achievements, my life's part-time work goes largely unnoticed.

When it comes to your business, your lawyer shouldn't be naming it. What your lawyer should be doing is “clearing” your corporation's proposed name with the appropriate corporate registry in your province, and if you are selling goods or services with a unique or catchy name or logo that you want to exclusively use (and prevent others from using), your lawyer should be suggesting a formal trademark registration for it.

Although helpful to a point, a “business name” or “assumed name” and even your corporate name will not give you the protection you need to sell your goods or provide your services under that name to the exclusion of others in Canada. So potentially, if you don't have a registered trademark, someone who has one can demand that you stop using that name or logo, even if you've used it for some time and built up some brand awareness and goodwill (not to mention sales).

For this kind of protection, you'll need a trademark registered under the federal Trade-marks Act.

A trademark can be a word (“Apple” for computers, phones and virtually everything else with an off switch), a number (“Lotto 649”), a slogan (“we do it all for you”), or a wordless logo (the “Nike” swoosh). It can even be a shape (the ubiquitous “Coke” bottle is a trademark known as a “distinguishing guise”). A trademark distinguishes your goods and services from those of others in the market.

A trademark can be a number, like Lotto 6/49.

You'll want a trademark that's not barred from registration under the Trade-marks Act for technical reasons. You'll want one that's distinctive of you and your goods or services, and not one that is too generic or that is registered for so many different products and services by so many other vendors that it isn't distinctive. And you'll especially want one that isn't confusing with a trademark someone else owns. This could either be someone with a registered trademark for the same goods or services you plan to register for, or it could be the user of a mark who hasn't registered but who has used it for longer than you have.

Trademark rights in Canada are generally determined by the first to use, not the first to register. You can apply for a trademark based on actual use (that is, you can prove you've used it in respect of the sale of goods or the advertising or performance of services), or on the basis of proposed use (that is, you intend to use it within the next three years or so). You can use your application or registration in Canada to apply for the same mark in the United States and other countries with certain priority benefits, which helps if you want to expand internationally.

The process to obtain a registered trademark is conducted through the Canadian Intellectual Property Office (CIPO) in Ottawa. Although nothing stops you from applying for the trademark yourself, most businesses use lawyers who are trademark agents (or trademark agents who are not lawyers). CIPO has a useful guide to selecting a trademark on its website .

As for trademark searches, before you spend your money applying for a trademark (or selling products or providing services under that mark), you should search your trademark to make sure nobody else has the same name or logo, or one that is confusingly similar to yours.

You can perform a search of your proposed trademark using CIPO's internal database , but you have to appreciate that it has numerous limitations and does not, in my opinion, adequately find similar applications or registrations that might be spelled differently. It certainly won't find unregistered users.

You're better off having your lawyer or trademark agent do a formal search using Thomson, OnScope or another search company, which will use their search algorithms to find all uses and users of your trademark on multiple databases before you find you've spent lots of money applying for one that, at the end of the day, you won't be able to register. And if you're starting a franchise, you really need a registered trademark so that your franchisees will have the lawful right to use your mark.

But you have to appreciate that a trademark is only part of the equation. What you really want for your business is a brand, and a brand is more than a name or a trademark, as I am reminded by my colleague Michael Allabarton, of BrandDig Consulting in Victoria. Mr. Allabarton correctly reminds me that “branding is everything a company does. It's a company's heart and soul. Its values. Its behaviour. Branding isn't clever packaging, or PR spin. It's an integrated personality and market positioning that projects the image and values of an organization.

“More importantly, branding is how a company reveals its personality and delivers on its market position. Companies that recognize true brand value also understand that they do not own brands. Consumers own brands. Companies own trademarks.”

So with his comments in mind, get your lawyer to vet the name and register a trademark for you. But use a branding expert to help develop that brand.

Special to the Globe and Mail

Vancouver franchise lawyer Tony Wilson is the author of Buying A Franchise In Canada – Understanding and Negotiating Your Franchise Agreement and he is ranked as a leading Canadian franchise lawyer by LEXPERT. He is head of the Franchise Law Group at Boughton Law Corporation in Vancouver and acts for both franchisors and franchisees across Canada, many of whom are in the food services and hospitality industry. He is a registered Trademark Agent, an Adjunct Professor at Simon Fraser University and he also writes for Bartalk and Canadian Lawyer magazines.

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