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WebFuel is Proudly CanadainAs part of Education month at WebFuel, we have invited Kathryn Szymczyk, Canadian Intellectual Property Lawyer, to blog about protecting your brand on the Internet from a legal perspective. What do we see as a SEO Agency? Too many Canadian Businesses not paying close attention to their brand in Search – or Social Media. The great thing about a guest blogger is that they can address the same topic but from a different perspective. Our area of expertise is not trademarks. This is however something that every business should understand – especially online.

Guest Post by Kathryn Szymczyk

Protecting your brand on the web. What every business needs to know before advertising your brand on the Internet.

Your brand, also called a trade-mark, is often the most valuable asset you own. It distinguishes you from your competitors and allows your customers to identify you as the source of the products and / or services you offer. As such, it is important to ensure that your brand is unique to you and that you have exclusive rights to use it before launching your advertising campaign on the Internet.

Step One: Ensure Your Brand is Unique
Before investing time, money and energy into promoting and creating goodwill in your brand on the Internet, it is important to determine whether or not a 3rd party already has rights to the name or mark in Canada in association with the same (or similar) goods / services. In addition to ensuring that your mark is unique in your industry, and thus avoiding confusion among your customers, such a search could also avoid an expensive lawsuit against you.

Before moving forward with a new name or mark, we highly recommend that you conduct a trade-mark search to ensure that it is available for use and registration in Canada. The search that is completed when you incorporate or register your business name is not sufficient. A full availability / registrability search includes a search of the Canadian trade-mark registry, of domain name registries, of telephone directories and the Internet, in addition to corporate registries, and as such is the most reliable method for identifying any potential obstacles to your use and registration of a trade-mark in Canada.

Step Two: Register Your Rights
Although rights to a brand can arise through simple use, such rights can be very limited, especially geographically. A Canadian trade-mark registration gives you the exclusive right across Canada to use your brand in association with your goods and services.

Advertising and sales on the Internet has made it possible to offer your goods and services to customers in other jurisdictions. If your goods and services will be available in other countries through your website we highly recommend that you take steps to register your rights in those jurisdictions as well.

Step Three: Use Your Brand
In order to ensure that your brand remains a unique indication of source, it is important that you use it properly on your website and elsewhere. Otherwise, you risk it becoming generic and available for use by anyone in your industry. The following are some helpful tips with respect to use of your brand:

  • Although not required in Canada, it is highly recommended to place a ™ symbol beside unregistered trade-marks and an ® symbol beside those trade-marks that have been registered. These symbols warn the public that the owner has or claims to have a proprietary interest in the mark;
  • Use trade-marks as proper nouns and use the descriptive term for the product or service beside the mark (e.g. KLEENEX tissues);
  • Do not pluralize singular marks (e.g. OREO cookies, not OREOS);
  • Do not use trade-marks in the possessive form;
  • Do not use marks as verbs or nouns (e.g. You are not Xeroxing, but photocopying on a XEROX copier).

Step Four: Enforce Your Brand
Encourage your staff, distributors and others to be vigilant and report the use of identical or similar brands by competitors in the jurisdictions in which you operate. Should such use be allowed to continue with no intervention, your mark could lose its distinctiveness and no longer act as a unique indicator of source. This may not only result in the loss of customers but also the loss of your exclusive rights to the mark.

Are you choosing, registering and enforcing your brand correctly?

Kathryn Szymczyk, Lawyer and Trade-mark Agent with the national law firm Borden Ladner Gervais LLP, has been practicing trade-mark law for the last 13 years both in Canada and in Europe.  She has a special interest in the effect that the internet has had on the use and protection of trade-marks and copyright.

Disclaimer: The contents of this Blog post, and associated opinions  are those of its Author, and do not necessarily represent the opinions of WebFuel, or its employees.