Strategic Advocacy for Trademark, Branding and Counterfeit Disputes – Toronto Trademark Infringement Litigation Lawyers
In many cases, a business’s brand, reputation, and goodwill, can be its most important assets. Customers will visit, re-visit, and refer others to a business because of the reputation created through its successful branding initiatives and quality products and services. Therefore, it is important for any business to be aware of the tools available to protect their brand from being devalued or misused by others.
Trademark, Copyright and Industrial Design
Some of these tools are preventative, such as by registering a trademark with CIPO, the USPTO, or other national trademark offices, and by ensuring the proper assignments or licenses are set out in any contracts with any designers or users of your trademarks. The copyrights for creative works can be registered, while fashion designers can seek protection of their creations as an industrial design.
Exploiting the value of a brand comes not only from increasing customer recognition and awareness of a company’s services, but often involves selling or licensing the right to use those marks to another, whether in the context of a wholesaler, distributor, manufacturer, or franchisee. If a brand is not strongly protected, licensees will be less inclined to pay for the rights to use a company’s brand if unauthorized users of those brands are not prevented from doing so.
The Trade-marks Act allows, in some instances, for licensees of a trademark to enforce trademark rights on behalf of the actual trademark owner where the owner fails to do so. However, prudent brand owners should take positive steps to protect their brand themselves in order to preserve the value and marketability of any future licenses of that mark.
Unfortunately, the more successful a trademark or brand, the more likely it is to be used by copycats, counterfeiters, and competitors to drive business and attention to themselves, relying on the goodwill and reputation created by the brand. In such cases, it is important to take swift action to minimize damage and preserve goodwill. This can be done in a number of ways.
Injunctions are an order of the court that a person immediately cease and desist from certain activity, or in some cases can require a person to take some positive step. These are useful when the infringing activity is causing irreparable harm. Establishing irreparable harm requires that the moving party must show that the harm caused cannot be adequately compensated for with a monetary award.
Trademark infringement and depreciation of goodwill can, in the appropriate circumstances, amount to such irreparable harm, even if some of the usual negative consequences (such as loss of market share or revenues) can be monetarily calculated by expert valuators. Earlier this year, the Federal Court of Canada in Sleep Country Canada Inc. v Sears Canada Inc, tackled this issue, and held that some harms resulting from trademark infringement can be incalculable, and therefore irreparable.
Anton Piller Order
One particular type of injunctions are Anton Piller orders, commonly described as a civil search warrant. These orders allow a moving party to recover documents and other items (such as counterfeit goods) from a defendant. Not only does such an order quickly prevent infringing activity from continuing, but also preserves evidence which may have otherwise been moved or destroyed to frustrate the moving party’s attempts to protect their reputation and goodwill.
Domain Name Protection
Where the infringing activity is because of a confusingly similar domain name, a complainant can also avail themselves of Alternative Dispute Resolution systems, agreed to by all domain registrars, and implemented through organizations such as the World Intellectual Property Office. These can be cost-effective options where the sole concern is the use of the domain name, or where the owner of the domain name is not known and hidden through privacy protection services, or located in a jurisdiction that is inconvenient for enforcing traditional litigation.
For many businesses, a high-traffic website is an invaluable asset. In the modern economy, it is the primary way to attract potential customers.
Successful websites also attract competitors and others who are looking to take advantage of your website’s success. By copying some or all of your website’s content, source code, or trade-marks, or by registering confusingly similar domain names, others can hope to make use of the goodwill and search engine optimization that your website has developed, artificially inflating their online presence at your expense.
These actions may also impact the online presence of your own site, as the uniqueness of your website becomes diluted, particularly in search engine results.
Appropriation of Personality
Often, a brand may be positively associated with specific individuals.
The unauthorized commercial use of the personality, image, representation, name or voice of an individual to endorse a product may be a violation of that person’s right to exploit their own personality. A careful consideration of each case is required to determine whether such conduct is wrongful and actionable at law.
Equally important is moving swiftly on any defamatory statements published, which can also damage a business’s reputation and goodwill. In Ontario, defamation requires that the moving party show that a statement about the moving party was published, to a third party, and that its content has the effect of damaging their reputation. In some circumstances, actual monetary losses need not be proven to be awarded general damages or equitable relief.
Injunctions can be useful to prevent the further dissipation of the defamatory statements, though such steps often involve free speech considerations. Where the defamer is located in another jurisdiction, and in particular the United States, moving parties should ensure that any injunctions or judgments obtained in Ontario comply with the local laws where those orders would be enforced.
Slander of Title | Slander of Goods or Malicious Falsehood
Slander of title occurs when a false statement is made of and concerning the goods or business of another, which is published with an intended dishonest or improper motive and which results in special damages to the intended victim. Issues often arise as to line between permissible and prohibited comparison of goods.
An injunction may be granted in suitable circumstances to avoid the occurrence of loss from malicious falsehood.
Why Gilbertson Davis LLP?
Gilbertson Davis LLP has lawyers who are experienced in this practice area and can assist with all available brand protection and enforcement tools, and can represent and advise local and international businesses to protect their reputation and goodwill. If you are involved in a branding or trademark dispute, contact us for an initial consultation.
Related Practice Index
Anton Pillar Order – “Civil Search Warrant”
Appropriation of Personality
Distribution | International Distribution
Domain Name Dispute
Fashion Design | Industrial Design
Internet and Technology
Passing Off Product or Packaging
Website Copying Claims