What is real
is not external form.



CONSTANTIN BRANCUSI

Misleading trademark. Solution

06.06.2018


Even if your trademark is stated as misleading there is still a way to register it.

 

Context

We currently represent one of our Swiss Clients in Canada. He intended to register several trademarks which include the company owner’s name.

 

Issue

The National IP Office of Canada conducted a research on the national trademarks which could be similar to our Client’s and rejected our application. The Office stated that our Client’s trademark is too similar to other national trademarks and can be misleading for Canadian consumers.

Deceptive trademarks suggest a component, ingredient or objective that would mislead consumers. For example, an ice cream branded VANILLA SNOW but flavored chocolate might be deemed deceptive. Misdescriptive marks are not “deceptively misdescriptive” unless there is some element of deception. Thus, if VANILLA SNOW was used for a paint primer there would be no deception since a reasonable consumer would not think the primer would taste like vanilla.

 

Solution

Comming back to our case, we have initiated a coexistence agreement to convince the national IP Office that our trademark isn’t misleading for Canadians.

A trademark coexistence is an agreement made by two companies which have the aim to use a similar trademark for marketing purposes. This kind of agreements are often made as parties only require the regional use of their trademarks, and therefore other enterprises use of a trademark will not harm their business. Coexistence agreements can also involve designs, copyrights and even patents.

The purpose of a trademark coexistence agreement is that often trademarks are used by multiple companies in “good faith”. The absence of a formal agreement does not undermine any enterprise using the mark as they are in different global regions. However, as the enterprises grow, overlaps can develop, and both parties can have substantial rights for using the trademark. In certain cases, companies who are expanding and using the same or a similar trademark usually enter in a coexistence agreement for the purpose of avoiding usage of the trademark in a way which is undesirable or infringing. Coexistence agreements can offer practical solutions to companies who are concerned about being sued for trademark infringement, as proactive agreements can avoid the large cost of litigation.

03.12.2020

Cease and desist letter- checked

With the help of a cease and desist letter, we managed to negotiate with the owner of a new trademark regarding the waiver of this, in order to protect our client’s trademark portfolio. This kind of letter is made in order to stop certain actions setted up in deadlines. The whole procedure took place between ( learn more )

20.11.2020

How can we support the development of the neurological industry?

Thanks to our client, the neurology product research and development industry continues to grow. In this sense, we have managed to obtain the registration of an innovative method in the neurological medical technology industry. The entire process has been examined and accepted by the European Patent Office. We are more than happy to see the ( learn more )

10.11.2020

Website Functionality and Layout

For businesses that operate online, maintaining a website that’s informative, easy to use, and free of any intellectual property right infringement is extremely important. After all, the value of many online businesses is affected by two main factors: turnover/profit, and the value of the intellectual property rights it owns or controls. There are a number ( learn more )