How to Prevent Trademark Infringement

Dave MacDonell

Dave MacDonell

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Prevent Trademark Infringement

The first step in preventing trademark infringement is to monitor your trademark. Once you’ve obtained trademark registration in Canada, you will have to start being proactive about monitoring potential infringement. In doing so, you will:

  1. Check the CIPO trademarks journal on a regular basis to ensure that there are no competing trademarks pending registration. Typically, larger businesses and organizations will pay a trademark lawyer or trademark agent to do this for them. Obviously, this isn’t always practical for small businesses or individuals.
  2. Proper infringement monitoring also involves searching various trade journals and newspapers.
  3. Corporate and business name registrations can also be monitored through regular NUANS name searching.
  4. Another way to monitor infringement is to search through Internet domain name registrations to see if there are any identical or potentially confusing registrations.

Many trademark lawyers and trademark agents in Canada offer trademark monitoring services, and it is always advisable to have somebody experienced in trademark monitoring doing it for you.

So what happens if you find an infringer? Well, there are various mechanisms to stop infringement. Once you become aware of the confusing same or similar trademark, it is essential that you take steps to stop the infringer. The consequence of not taking steps to stop infringement is that you may actually lose your trademark registration in Canada.

The first step, usually, is to send a polite letter to the infringer advising them that you own the pre-existing registered trademark in Canada, and that they are infringing your mark. If that doesn’t work, you should consult with a trademark lawyer who can outline your options and chances of success. Your trademark lawyer will send a formal legal letter to the infringer – this letter is called a ‘cease and desist’ demand. Cease and desist demands are often strongly worded letters that threaten the infringer with legal action. Sometimes, the cease and desist letter will offer either a co-existence agreement – an agreement that allows the infringer to use the infringing trademark with strict restrictions – or a grant of a license to use the trademark for a fee. In both cases, you would enter into a legal agreement with the infringing party that limits their use of the trademark. One famous example of this is the case of the World Wildlife Fund which licensed the initials WWF (formerly the initials used by the World Wrestling Federation) as a means of preventing the World Wrestling Federation from using the acronym in its marketing and promotional activities.

If co-existence or licensing negotiations fail, alternative dispute resolution (ADR) can be an effective means of resolving infringement disputes. Litigation should be the last resort. It is expensive and time-consuming as compared to the other means of enforcement discussed above. Most Toronto trademark lawyers offer infringement services, and it is best to consult with a trademark lawyer as soon as possible once you become aware of infringement of your trademark. If you don’t, you risk losing your Canadian trademark registration.

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