What is real
is not external form.”
Even if your trademark is stated as misleading there is still a way to register it.
We currently represent one of our Swiss Clients in Canada. He intended to register several trademarks which include the company owner’s name.
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.
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.
For those unfamiliar with what WIPO stands for, WIPO is the main agency acting on an international level, under which Intellectual Property services, policies and information are developed in a balanced and effective way, helping us bring innovation and creativity into our lives. Even if you are not familiar with the acronym UDRP, you certainly ( learn more )
A large part of our team has been present at the most important IP-event held this year in Boston, in May 2019. Our colleagues have met several partners and colleagues. They have also negotiated, during face-to-face meetings, key aspects of pending deals in the name of our clients. It was also another year when our ( learn more )
Among our recent large mandates, we are proud to count the IP due-diligence performed in the name of a famous US investment-fund, who just bought a network of private clinics in Eastern-Europe. The focus is not only on the brand itself, but also on additional good-will which can be captured through several assets including websites, ( learn more )