Steps for Policing Trademark Rights During a Pandemic
The COVID-19 pandemic has changed the way the Canadian market functions. In light of new events where doing business is hard, businesses worldwide are resorting to impulsive decision making to boost their profits. One of these decisions is adding new products to their lineup, whose trademarks may already belong to some other business or individual. Thus, trademark owners may need to ramp up their trademark policing to ensure they don't lose their trademark rights.
If a trademark owner spots a trademark infringement, no matter how trivial, steps should be taken to police their trademark rights against the infringing party. Failing to do so can result in the trademark losing the ability to distinguish the owner as a trade source, thereby becoming non-distinctive. Here are some steps trademark owners can take to police their trademarks in the current situation:
Even before the COVID-19 pandemic struck, demand letters were a common trademark policing tools. They are also referred to as cease and desist letters sent by a lawyer on behalf of the infringing party’s trademark owner. A demand letter enforces a notice of the trademark owner's rights and asks the infringing party to cease their infringing activity at the earliest. To make it more effective, demand letters generally set out next steps should the letter be ignored, including potential litigation.
Demand letters, legal notices, and litigation aren't the only way to police trademarks in Canada. An alternative that may favor both parties is a licensing agreement that allows the trademark owner to license their trademarks to another party. The agreement allows the owner to control how the licensee uses the trademark without risking a loss of distinctiveness.
A trademark owner may not notice an outright infringement of their trademark in the market, but they may also come across a trademark application at the governing body's database. Canadian trademark laws has a mechanism that provides trademark owners with an administrative proceeding to oppose the trademark application with the Canadian Intellectual Property Office (CIPO). It can be filed on multiple grounds, one of them being the protection of the trademark's distinctiveness or avoiding infringement.
If the trademark owner comes across an infringing party that is unwilling to respond to demand letters or requests of licensing agreements, they can choose litigation. The only problem being, many Canadian courts, including the Federal Court, have suspended litigation deadlines due to the pandemic, which may delay the proceedings.
The trademark owner can still proceed with court actions as it offers the owner many benefits while enforcing the trademark's rights. The trademark owner can seek relief in the form of interlocutory or permanent injunction restraining infringer from continuing their infringing activity. Court actions also allow the trademark owner to seek monetary relief for legal costs and damages against the infringing party.
Trademark owners should be vigilant in the current market conditions. They should monitor the CIPO Trademarks Journal and notify any party that infringes on their trademarks. Doing so may be time-consuming and stressful, in which case, trademark owners can book a consultation with Prowse Chowne. Our trademark law services are here to help protect the trademark owners' trademark rights in Canada.