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.

18.09.2020

Class down, trademark up

Between August and September 2020, we faced a fairly common issue in the world of intellectual property. We have identified a similar trademark to that of one of our clients. The next step was contacting and starting the negotiation procedure with the opposing party in order to waive the protection of one of the classes, ( learn more )

14.09.2020

Registration criteria for slogans

Although many famous slogans enjoy incredible success, many others face the barrier of not being able to be registered. What could be the main reason why a short series of words cannot be registered? What is the definition of a slogan? Before finding out the reasons why certain slogans cannot be registered, we need to ( learn more )

08.09.2020

Readying your brand to go abroad

The internet’s boundless borders have paved the way for small businesses to become international. Businesses that operate online also maintain multiple platforms of operation, including a website and social media accounts, and thereby increasing visibility and access to both consumers and potential brand abusers alike. Having brand protection that spans borders and countries is becoming ( learn more )