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Register Your Canadian Trademark BEFORE Rebranding

By Dave MacDonell on August 27, 2013

CBC Radio-Canada recently commenced an action against CFHG-DT, a Montreal television station who had registered the trademark “ICI”, seeking a cancellation of their registration.  Radio-Canada claims that they have had a long history of using “ICI” since the 1930s, including as a part of the title of a now defunct magazine and publishing arm.  Some media surrounding the case has largely focused on the registrability of the word “ICI” itself and the lack of action on the part of Radio-Canada until after the registration had been obtained.

The first issue to look at is how CFHG-DT was able to obtain a trademark registration for “ICI” in the first place.  Many believe that you cannot trademark a regular word found in the dictionary.  This is a common misconception about trademarks and in fact, the vast majority of trademarks are just made up of ordinary words you can find in the dictionary.

These descriptive words can be used as long as they do not have a connection with your wares or services (S. 12(1)(b) of the Trademarks Act).  For example, you could register “CHEESE” for a clothing brand, but not for a cheese product.  Additionally, registering the word “CHEESE” does not prevent others from using that word because of S. 20(1)(b) of the Trademarks Act, which permits anyone to use the words contained in a trademark registration as long as they are not using them as a trademark and not causing confusion with the registered mark.

Another misconception about trademarks is that the Trademarks Office searches for common law marks when clearing proposed marks for registration.  In fact, the Trademarks Office only searches registrations and applications for registration.  So even if Radio-Canada has been using “ICI” for a number of years, it was not registered as a mark, so the trademark was properly registered, and no opposition was filed by Radio-Canada. Review our should you register your trademark post, or view our do you need to register your trademark video.

Radio-Canada is left in the position of having to attempt to expunge the registered trademark “ICI” because they do not have a registered trademark and therefore cannot argue infringement or passing off.  To do this, they have to demonstrate that they have prior use of “ICI”.  This prior cannot be a mere mention of the word “ici”, but must be prior use as a trademark.  Use as a trademark is defined under S. 4 of the Trademarks Act, but it cannot be descriptive use or generic use and denotes the source of a ware or service.

A final point about this case is that Radio-Canada now finds itself on the receiving end of some negative attention in the media.  Business owners are entitled to, and should, defend their intellectual property rights, however, they should also bear in mind that these efforts can subject them to scrutiny.

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