Since it began supplying Canadians with freshly brewed coffee in 1964, “Tim Hortons” has grown into one Canada’s most iconic corporate brands. So iconic in fact that certain enterprising individuals in South Korea have attempted to cash in on the goodwill of the internationally recognized Tim Hortons trademark by selling coffee products under the rather unimaginative label of “Tim Mortons.”
The blasphemy of the Tim Mortons knock-off of Canada’s beloved Tim Hortons serves as a poignant reminder of the value of intellectual property and the awareness which Canadian businesses should have when it comes to protecting their trademarks.
But what is a trademark, and how do you go about defending what is yours?
Trademarks come in a variety of forms. They may be one or a combination of words, they may even be a sound or design, but ultimately a trademark is something used to distinguish the goods and/or services of one person or organization from those of others in a similar marketplace. The reason trademarks can become so valuable is because they represent the reputation of their holder.
There are a number of rules with respect to what types of marks may or may not be registered. One such rule is that a trademark may not be registered if it is nothing more than a name or surname (for example, John Doe).
How then was “Tim Hortons” able to become a registered trademark? Well, an exception to the restriction against the registration of names or surnames as trademarks exists if you can prove that your goods or services have become distinctive under the name or surname so that the word has acquired a secondary meaning in the public mind. “Tim Hortons” fell under this exception because it was used in Canada and, over many years, distinguished the goods and services of its owner from similar businesses before an application for registration was filed.
Restricting our discussion to Canadian businesses operating within Canada, having the right to use a particular trademark can be achieved in two ways:
1. As an Unregistered Trademark
If you have created a trademark and have used it in Canada in association with goods or services, your rights to the use and ownership of that trademark will be established through common law trademark rights. However, those rights will be limited to the geographical area that your trademark is used and you will not be able to make a claim for any damages caused by another party’s use of a confusingly similar trademark to yours. The more value your trademark may hold, the more important it is to register it.
2. As a Registered Trademark
If you decide to apply to have your trademark registered with the Canadian Intellectual Property Office, you will have exclusive rights to use the trademark across Canada for 10 years (based on the anticipated enforcement of amendments to the Trademarks Act), after which time you may renew for an additional 10 year period. Registration has many benefits, including creating an identifiable asset, having your trademark on the Registrar of Trademarks database, preventing similar trademarks in association with parallel goods and/or services from being registered, and providing you with additional legal defences against infringement or misuse by others and the ability to seek damages for such infringement or misuse.
Finally, it is important to note that it is the responsibility of the trademark owner to enforce their rights. As such, trademark owners such as Tim Hortons must be vigilant in monitoring the marketplace and taking action against any branding that may be confusing with their trademark.
I’m looking at you, Tim Mortons.
This article was written by Brian Stephenson, an articling student currently assisting Vanessa DeDominicis in our Intellectual Property Group.
