Reputation, reputation, reputation! O, I have lost my reputation! I have lost the immortal part of myself…”
William Shakespeare, Othello, Act 2, Scene 3
What if your name and goodwill were stolen tomorrow, what would your business be worth? Not much! A company must create and control its identity in the marketplace. Your company may have the best product or service in the marketplace; however, if people do not know about your products or services, your market-share will not exist. Ernest & Julio Gallo discovered it early, others such as Les Caves Jordan & Ste-Michelle Ltée have suffered the consequences.
What is a Trade-mark?
1. a trade-mark is any word, logo, design or symbol or a combination of words, logos, designs or symbols which identifies and distinguishes the sources of wares or services of one party from those of others in the marketplace
2. a trade-mark represents the goodwill, trust, loyalty, brand recognition of a product or service
3. unregistered trade-marks are recognized and protected at common law but receive additional protection by registration under the Trade-marks Act.
Examples of Trade-marks:
- a single word, i.e., “Coke “
- a combination of words, i.e.”President’s Choice “
- a design or symbol, i.e., the golden arches big “M ” for McDonalds
- a slogan, i.e., “Where do you want to go today ” of the Microsoft Corporation
- a package or container designs, i.e., “the Coca-Cola bottle”
In addition to investing in and nurturing their corporate images, your competitors no doubt understand the value of protecting them and are taking steps to protect them.
Why are Registered Trade-marks so important to Wineries?
Reputation is everything. A registered trade-mark can represent one of the most valuable assets of a company. It represents legal title to owning and protecting your corporate identity. The president of Coca-Cola is quoted to have said that if it lost all its manufacturing plants, the company could survive and rebuild as long as it still had its trade-mark. Thus, be it a small, medium or large enterprise, a trade-mark has tremendous value since it can:
- be monetized to reflect a company’s marketing investments
- reflect the value of the company’s brand equity
- be leveraged to obtain additional financing
- reflect quality and reliable standards that clients and potential clients trust
- be a source of revenue through licensing
- keep imitators at bay
A trade-mark distinguishes your company from others. It also has future and present marketing value.
Trade name vs. Trade-mark
A trade name is the corporate or business name under which a company conducts business. A trade name can also be used as a trade-mark if it is used to identify wares or services. For instance, “The Xerox Company” is a business name, and “Xerox ” is a trade-mark. Therefore, a trade name can only be registered under the Trade-marks Act if it is also used as a trade-mark to identify wares and services.
The registration of a trade name under applicable corporate law such as the Ontario Business Names Act, the Ontario Business Corporations Act or the Canada Business Corporations Act is for public information purposes and does not confer any exclusive trade-mark rights. The owner of a trade name has common law rights to the trade name based upon entitlement to prevent others from “piggybacking” on the goodwill of a trade name. This, however, may prove to be an expensive endeavour.
Registered Trade-mark vs. Unregistered Trade-mark
By registering a trade-mark, a company obtains the exclusive right to use the mark across Canada for 15 years. This exclusive right is a monopoly to use it and to prevent all others from doing so. Upon payment of the government fee, it can be renewed every 15 years thereafter, even though it may be in use only in one particular area of the country. Unregistered or common law rights to a trade-mark extend only to the area in which the owner has established a reputation. There is potential for long and expensive legal disputes over who has the right of use. Registration, on the other hand, provides the opportunity for faster recourse in the case of trade-mark infringement. It provides a presumption and evidence of ownership. In addition, a company’s existing common law trade-mark rights may be limited if another party obtains registration in good faith and such registration is not contested within 5 years.
Once registration is obtained, it facilitates the registration of the same trade-mark in other countries that are members of the Paris Convention. Given that wineries export, this is a strong advantage. Also within six months of filing in Canada, the filing date for the same trade-mark application can be used in another country. No such international rights exist for trade names or unregistered trade-marks.