Why You Should Protect Your Trademarks Sooner Rather Than Later
Protection of intellectual property is often overlooked or put off by companies as they move from the startup phase to the growth phase. It is easy to focus attention on the inner workings of the company and assume that protection of the trademark can be completed at a later date without consequence. There are several reasons it is important to obtain a registered trademark sooner rather than later:
- If everyone does it, then it probably isn't protectable. If everyone begins using your trademark before it is registered, it may not be protectable when you decide it is time to get a registration. When a trademark is used by several people or companies in the same industry, it tends to be considered generic. There is no such thing as a generic trademark which means a delay in obtaining protection for a trademark can result in an inability to obtain a trademark registration.
- The bigger you become, the more expensive it becomes to rebrand. Companies can spend a great deal of capital on choosing a brand and protecting it. Sometimes, the brand that is chosen is not registrable as a trademark or can infringe another trademark. If a trademark application is filed early on, these types of issues may surface while the company is still small. While rebranding can be expensive, it is likely much more expensive for a larger company to rebrand than it is for a smaller company to rebrand.
- Registered trademarks have a broader scope of protection than unregistered trademarks. While there is some limited protection available to unregistered trademarks, this protection pales in comparison to the protection available to a registered trademark. Registered trademarks are enforceable throughout Canada and there are several different causes of action available to owners when their trademarks are infringed by a third party. In comparison, unregistered trademarks are only enforceable in the area in which the trademark is known and only passing off actions are available when a trademark is being infringed.
- It takes time to build up the goodwill necessary to be successful in a passing off action. Goodwill is the reputation that is associated with a particular trademark. Goodwill is not built up over night, it takes time to improve a brand reputation and during this time an unregistered trademark is much more vulnerable than a registered trademark.
- A third party may seek to register a confusing trademark. During the trademark registration process, all pending applications and registered trademarks are searched to determine whether or not the trademark in question is confusing with other trademarks or applications on the register. Unregistered trademarks are not reviewed. The only way to prevent this type of trademark from being registered is to enter opposition proceedings which can be time consuming and expensive. If the confusing trademark is successfully registered, the only option available for its removal is to petition the Federal Court, another expensive and time consuming process.These are only a few of the reasons why it is important to protect your brand sooner rather than later. The potential risks of waiting to register a trademark are great and can be extremely costly to a business.
Lorraine ProwsePatent and Trademark Agent