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.
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 licences 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.
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.
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.
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.
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.
The lawyers at Gilbertson Davis LLP have experience with all manner of 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.