Puma lost a trademark dispute against Caterpillar in Canada

When it comes to the registration of trademarks the similarity between signs can be a delicate moment for every applicant even for the biggest and most famous companies in the world.

This was the case with the German well-known sportswear manufacturer Puma which applied for trademark PROCAT in Canada for footwear and headgear.

Against this application, an opposition was filed by Caterpillar based on earlier marks CAT for the same goods.

Initially, the Trademarks Opposition Board dismissed the opposition not finding enough similarity between the signs.

In the appeal, however, the Federal Court annulled this decision with the argument that PROCAT and CAT are similar signs for identical goods.

Puma claimed that the PRO prefix in their mark was sufficient in order to create a distinction between the signs in the consumer’s mind.

The Court didn’t credit this argument finding PRO meaning related to something suggestive or laudatory for the characteristic of the products. This word is used by many companies to stress the better quality or other characteristics of their goods or services.

From that perspective, PRO has weak distinctiveness and CAT has the dominant importance for the understanding of the mark’s meaning.

Puma failed to prove that PROCAT has its own distinctiveness as a whole and that this sign was related by consumers to their particular products.

Additionally, there was no evidence that CAT is a common word or such one with a low distinctive character for the above-mentioned goods in order for small differences between the signs to be sufficient for a dissimilarity conclusion.

On the other hand, Caterpillar successfully proved the reputation of their earlier marks for the goods in class 25.

Source: Canadianlawyermag.

Can Hallmark be a trademark for real estate?

The Federal Court in Canada has issued a decision regarding the option for registration of descriptive and low-distinctive signs.

In the case at hand, a trademark application for HALLMARK was filed that covers real estate services.

Against this application an opposition arises based, among others, on a claim for descriptiveness and non-distinctiveness of the sign. In English HALLMARK means a distinctive characteristic of something or someone related to excellence. The word is used for indication of gold, silver, etc. quality characteristics. Based on this the opponent claimed that the mark applied for has a laudatory meaning.

The Patent Office disagreed and dismissed the opposition. According to the Office descriptiveness of a term requires a “clear” meaning related to the goods and services mentioned in the trademark application.

Although the word Hallmark has a laudatory characteristic it does not relate directly to the real estate business. In regard to the non-distinctiveness, the opponent failed to provide any evidence that the sign has been commonly used in Canada for respecting services.

In the appeal, the Court upheld this decision stating that descriptiveness requires a clear connection with the goods and services in the application. Only abstract or associate meaning is not enough in order for this claim to be successful. The fact that one word is a laudatory term does not mean automatically that it cannot be a protected trademark as remains the case with suggestive trademarks that has an associative meaning which requires intellectual efforts from the public in order the connection with the goods and services to be discovered.

Source:  John McKeown, Goldman Sloan Nash & Haber LLP

One crucial thing before filing a trademark in order not to waste your money and time

When you have your own business sooner or later you will start thinking about your branding and how to protect it from unfair use by competitors.

All of this is normal because when one business takes off, gaining some traction and achieving some success, other market participants will try to take advantage of its reputation and recognizability amongst the consumers. 

From that perspective, every business owner should be prepared with a proper trademark protection strategy.

Building a good brand name is not an easy task. From one side, such a name should follow so many marketing requirements, from the other the name should be unique, that is to say, it must not be registered as a trademark by someone else.

This, in particular, is essential. If your brand is already registered with the Patent Office of the country where you are operating as a business, this means that you can become a trademark infringer even without suspecting this.

It can be a trap because in such cases a lawsuit can be really expensive and in the end, you probably will need to change your beloved brand.

What is the solution in such situations? Well, it is a simple one, just check the official trademark database of your state Patent Office. This will show you whether there are earlier marks or not.

What do you need to know when you conduct such searches?

In brief, the things that can be bear in mind are:

  1. Every trademark is valid only for the goods and services for which it is registered. This means that when you compare two marks they have to share common G&S. If this is the case it could create a problem. All goods and services are grouped in classes called Nice Classes. You can classify your G&S using this free tool TMCLASS.
  2. Trademark protection scope covers not only other identical signs but similar too. For example, a trademark INEX for bicycles can stop a later mark INIX for bicycles.
  3. Assessment of identical marks is relatively easy. Both marks should be absolutely identical in every aspect. They have to be for identical G&S too.
  4. Assessment of similar marks, however, could be tricky. This requires in-depth legal knowledge and understanding of the case law in the relevant country.

It is advisable, such searches to be done through the brand-building process because this will allow you to make modifications to the brand before launching and filing a trademark application. It can save you a lot of money and time. 

In case you want to learn how to do trademark searches in the US, Canada, the UK, Ireland, Australia, and New Zealand you can check this Udemy Complete course on trademark search.

One key moment when you launch a new brand

man-wearing-gray-long-sleeved-shirt-374598Launching a new brand in the market is always a challenge. It requires lots of effort and good business and marketing strategies as a ground.

Before launching the brand, however, you need to have an appropriate brand name which in most the cases is a product of a brand-building process.

You have two main options in that regard, to try to create the brand name on your own, in case that you don’t have a big marketing budget, or to hire an agency that will do that for you.

In both of the cases, however, there is one specific moment that you need to pay attention to. It is related to the question to what extent you can use and protect your brand.

It can sound not so an important issue at first glance but it is. The reason for this is that if you start using a brand for which there are already registered trademarks by someone else, you risk becoming a trademark infringer. This can create a myriad of problems for you including the need to re-brand and pay compensations.

And what is the chance for this?

It is not negligible at least because there are millions of registered trademarks in the world which in turn require a lot of attention when a new brand is introduced in the market.

One of the ways to escape such negative scenarios is a trademark clearance search to be implemented before the launch. This can save you not only time but money but will protect you from legal pitfalls.

If you want to learn how to do such trademark searches in the US, Canada, the UK, Ireland, Australia, and New Zealand, you can check this new and useful Udemy course on this topic here.

Do you want to search for trademarks on your own?

Acting DirectorWhen you want to launch a new brand in the market one of the key moment is to be sure that there is no other identical or similar marks to yours. This is a crucial moment because otherwise after your launch you can be accused of infringement of rights by owners of earlier trademarks.

It’s not enough to check for such earlier marks just before the launch, it’s much better if you do this throughout the brand-building process because you will be able to make the necessary changes in your name without losing time at the last moment.

You have two main options to search for trademarks. The first one is to ask the relevant Patent Office to do that, which is possible because most of the Offices offer such a service. The downside here is that for every search you need to pay a fee and to lose some time due to the fact that such search reports are not instantaneous.

The alternative is to do this search on your own. Is this possible? Yes, it is. Most of the Patent Offices have free and open online databases for trademarks because this information is public. You can check them searching for your trademark.

However, you need to know some of the basic principles of trademark protection and how these database works and their nitty-gritty.

If you want to learn how to do such searches and to save time and money you can check this new Udemy course on this topic which will be launch very soon. It will teach you to perform trademark searches for the territories of the US, Canada, the UK, Republic of Ireland, Australia and New Zealand.

For early birds that sign up, there will be free coupons.

For more information here.