Unlike other intellectual property assets like patents and copyrights, trademarks do not have an expiry date in
A company that owns a trademark and allows other companies operating in the same field to use identical or similar trademarks would see the distinctiveness of its trademark diluted in the market. This can lead to the loss of rights in the trademark, making it challenging to take legal action against third parties using a similar trademark. As a result, the company's market share and revenue may be adversely affected. Indeed, a trademark serves as an indicator of the source of the goods and services in association with which it is used, and it is crucial to keep it unique. If consumers can no longer identify it with a single source, but with numerous sources, its value becomes compromised.
A pertinent example of this scenario can be seen in Gentec v.
The Court ruled in favour of
To establish and protect trademark rights while deterring potential use by third parties, it is advisable to consistently identify the trademark as such by using the recognized symbols. The symbols TM (trademark) or MC (marque de commerce) shouldbe used for unregistered, pending or even registered trademarks, whereas the symbols ® (registered) or MD (marque déposée) should be used exclusively for registered trademarks.
However, maintaining the distinctive character of a trademark and the rights it carries requires active monitoring of the market. This ensures that the trademark or similar marks are not being used by third parties. If a problematic trademark used by a third party is spotted in connection with the same type of goods and services within the same geographical territory, it is essential to determine whether action should be taken to stop its use or oppose its registration in the event an application has been filed by a third party.
Our team can set up a trademark watch service to keep you informed of any applications for registration of identical or similar trademarks filed by third parties in
Originally published
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
Ms Sarah Hébert-
BCF Business Law
1100 René-Lévesque Blvd West
URL: www.bcf.ca/en
© Mondaq Ltd, 2023 - Tel. +44 (0)20 8544 8300 - http://www.mondaq.com, source