Diversifying your product offering to combat COVID-19: what are the implications for trademarks?

Geneviève Hallé-Désilets[1] et Catherine Bergeron[2]
ROBIC, LLP
Lawyers, Patent and Trademark Agents

From Pur Vodka to Tristan, which have recently taken up the manufacturing of hand sanitizer and medical visors respectively, the examples of businesses that have diversified their product offering to overcome the lack of medical equipment and hygiene products are increasingly numerous in this period of crisis created by COVID-19. These new products may be offered in association with an existing trademark with acquired goodwill, or in association with a new trademark. But what about trademark protection? Will these businesses continue to offer these new products once the crisis is over? No one knows what the future holds, but the question deserves a reminder of the key concepts related to trademarks, particularly with respect to the importance of use and registration. Even amid crisis management, vigilance is required in order to protect one’s trademark rights.

Reminder of key concepts

First, a trademark is a sign (including a word or words, a slogan or a design) which serves to indicate to the public the source of goods and services available in the market, in order to distinguish them from those of others.

In Canada, contrary to most other countries, it is the use of a trademark in the marketplace that generates the rights therein, not its registration. The use of a trademark in association with goods means the affixing of the trademark on the goods themselves or on their labels or packaging so that consumers can take note of the mark when they purchase a product. In relation to services, the use of a trademark means the use or display of the trademark in the performance or advertising of the services.

That being said, the registration of a trademark, which will confirm the rights in such mark, confers many advantages, including the following. First, the registration has a federal scope, meaning that a business that uses its registered trademark only in Quebec will nevertheless be able to enforce its rights throughout Canada. Furthermore, since the adoption of the recent amendments to the Trademarks Act, it is now possible to file, on the basis of a Canadian application or registration, a single application for an international registration which then designates the countries of interest. Second, the registration confers a greater monetary value to the trademark, particularly due to the certainty of the extent of its monopoly, which is often a prerequisite in a licensing or franchise context. Finally, the term of a registration in Canada is ten (10) years, and such registration may be renewed – in principle – indefinitely. On the contrary, a trademark which is neither used nor registered can be taken up by a third party, subject to the residual rights in its goodwill.

Diversification of products: actions to be taken

In the case of the adoption of a new trademark used in connection with new products, we recommend filing an application for the registration of such trademark as soon as possible. Although the Canadian Intellectual Property Office (“CIPO”) has postponed to May 1, 2020[3], due to the restriction of activities related to COVID-19, all deadlines falling between March 16 and April 30, 2020, CIPO continues its operations and processes all new applications for registration. Therefore, it remains important to file an application for the registration of a new trademark quickly, particularly to avoid any conflict caused by the earlier filing of an application for a confusing trademark. Moreover, as mentioned, in many countries, it is the registration that confers rights in a trademark.

In the case of a trademark which is already registered, but used in connection with new products, our recommendation is to file an application for the amendment of the registration, to extend the scope of the registration to these new products. It is normal for a company’s business plans to evolve over time (or to adapt quickly to new circumstances!) and it is important that the registration of a trademark reflects its commercial reality in order to maximize its protection and valorization. Again, notwithstanding the postponing of deadlines, CIPO does currently handle such applications for amendments.

In sum, whether new products are offered in connection with a new or existing trademark, as the case may be, we recommend filing an application for the registration of such trademark, or filing an application to amend the registration of the existing trademark. In the preceding comments and recommendations, we have highlighted the diversification of a company’s products in the actual context where there is a pressing need for certain types of products aiming at the protection of the population and caregivers, but these recommendations equally apply to businesses having developed a new service offering. It is important to keep top of mind the protection of your trademarks, even in these turbulent times, irrespective of the nature of your business. We remind you that our team of trademark professionals is always available to advise you on the best strategies to adopt under the circumstances.

Congratulations to all those businesses that ingeniously adapt their activities to help the public!