As Canada’s most connected event and association management company we are pleased to publish guest blogs by our partners. This post is written by Kelsey Desjardine, a lawyer with Pitblado Law in Winnipeg, Manitoba.

Many associations recognize, as they grow, that they’d like to secure their brand by obtaining a registered trademark or certification mark. Unfortunately, this might not be possible if another organization or individual already owns a confusingly similar trademark. In the worst case, that organization could threaten your association with legal action for infringing their trademark. By taking a few small steps at the early stages of your association planning process, you can ensure that your brand is secure on an ongoing basis.

In Canada you gain common law rights to a trademark as soon as it is used, under an action for ‘passing off’. This gives you the ability to pursue other groups for misrepresenting that they are related to your association, but you will be required to prove the goodwill association with your trademark. If you can prove that your brand has been harmed by this passing off, you may be awarded damages by a court. Proving this type of case can be expensive and uncertain.

The easier route is to first obtain a registered trademark or certification mark from the Canadian Intellectual Property Office (CIPO). There are important differences between a registered trademark and a certification mark. A registered trademark is most commonly a design or words used in association with certain goods or services. A certification mark is a special type of trademark that is obtained by one entity but licensed to be used to other entities that meet certain defined standards, in relation to certain goods or services. CIPO has created a guide to this area of intellectual property law, as well as others.

By obtaining a registered trademark or certification mark, you are far better positioned to control your brand throughout Canada. Formal legal action for infringement of a registered trademark or certification mark, if necessary, is far more predictable than an action for passing off. The registration process, and the searches which accompany this process, provide the additional benefit of gauging the strength of your trademark. It is better, both financially and strategically, to learn of any potential weakness of your chosen trademark at the early stages of your planning.

An association has options in what it chooses to protect:

  • If you are not planning on actually performing the services or producing the goods associated with the trademark, a certification mark could be appropriate. Your association would maintain a defined standard to be associated with the mark, and license it to others that meet that standard. In that way your association would have a gatekeeper function.
  • If your association is intending to be directly involved in the performance or production of the goods and/or services, then a standard registered trademark is appropriate.

In either case, you could consider a design mark (which is just a logo), a composite mark (which is a combination of a logo and words), or a word mark (which is only composed of words). A registered trademark agent can assist in selecting the right trademark for your association, and help you navigate the registration and licensing process. A small amount of time at the early stages may help you avoid costly and complicated problems down the road.

Kelsey Desjardine, PhD, LLB
desjardine@pitblado.com
Registered Trademark Agent
Pitblado Law

This blog post is for informational purposes only and does not constitute legal advice or other professional advice. If you require legal advice, you should retain competent legal counsel to advise you.