 Hello, this is William Chow and this is Intellectual Property Part D. In this part, we will look at trademarks. There's a bunch of trademarks that you've probably seen before. They all represent large, large consumer corporations. A trademark is a word or symbol or design that distinguishes one's goods or services from another's in the marketplace. Take, for example, the apple symbol that you see there in the middle at the bottom. The silver or white trademark. If you see a product with that symbol on it, you know that the product is from the Apple company that's based in Cupertino, California. Along with knowing that it comes from Apple, there's a certain image, reputation or brand that is associated with that trademark. So with the Apple trademark, you might think that the product is high quality, well designed, well programmed. It's cool, it's fashionable. A lot of different things that are associated with that brand and the image of that brand. So in that way, that's how a trademark is used to distinguish Apple's products from other electronics that are in the marketplace. There are three categories of trademarks. Most trademarks that we are familiar with would be considered ordinary trademarks. So these distinguish goods and services with words or design. So just like the Google logo is a combination of design and words because it uses certain fonts. It has certain colors, but it's also the word Google. The second category is called certification marks. So these marks demonstrate that goods or services meet certain standards. So one example is where the phrase recognized by the Canadian Dental Association is used on a box of toothpaste. We know that that toothpaste meets certain standards. It is of a certain quality. The third category is distinguishing guises. So that's where the shape of the product or the package is used to identify the goods. Somehow that shape or package is unique. So the one very famous package shape is the hourglass shape of a Coca-Cola bottle. Now most recently sound marks is another category of trademark. So this distinguishes goods and services with sounds. And the ability to trademark a sound arises from a case involving the movie company MGM. So they were successful in being able to trademark the roar of the MGM lion as you see there. How is trademark protection obtained? Trademark protection arises only after a distinctive mark is created and then that mark is actually used in association with the sale of goods or services. Now registration is good and we'll explain why but it's actually not required to obtain ownership of a trademark. But the advantages of registration are that it gives you trademark protection all across Canada for 15 years. And that trademark protection can be renewed indefinitely as long as the business continues to use the trademark. Another advantage of registration is that if someone does challenge the validity of a trademark, the burden is upon the challenger to disprove ownership of the trademark. So the challenger has to show evidence that the registered owner is not the actual owner of the trademark. So with unregistered trademarks there's still protection but not as much. There's still protection by way of being able to sue under the tort of passing off but it's only with regard to the use of the trademark in the geographic area where the company has an established reputation. Let's look at a trademark owner's legal rights and especially rights with regard to trademark infringement. A trademark can be used by the owner itself in their own business or a trademark can be sold to someone else or it can be licensed for someone else to use. Typically in a franchising deal, let's say you're buying a Tim Hortons franchise. So you're the franchisee in your franchise agreement with Tim Hortons. Tim Hortons will give you a license to use their trademark in the operation of your restaurant. With respect to unregistered trademarks, that trademark is protected only in areas of Canada where it is actually being used and has gained a market reputation. So it's only in those specific areas. It's not all of Canada. If there is a trademark infringement, an unregistered trademark owner can sue for the tort of passing off. So the tort of passing off requires three things. The trademark owner has good will or reputation in the name, mark or logo. The defendant represented itself in a manner that resulted in misrepresentation or confusion to the public. And three, the trademark owner suffered or is likely to suffer harm. So those three requirements need to be met for that tort of passing off. Registration of a trademark gives the owner proof of ownership and exclusive right to use that trademark throughout Canada. In respect of certain goods or services, even though there may be no Canada-wide use or market reputation. So that's very different from an unregistered trademark. And that registration is valid for 15 years but can be renewed indefinitely for further 15-year periods as long as the trademark continues to be used and remains distinctive. So registered trademark owners can also sue for the tort of passing off, just like unregistered owners. But they can also sue for infringement for other things such as unauthorized use, knockoffs, trademark dilution, unauthorized importation and also confusing use of another mark in the marketplace. The remedies that are available when suing for trademark infringement could include claiming damages for injury to reputation and goodwill of the trademark. Suing for an account of profits earned by the infringer from the illegitimate use of the trademark. So you're forcing that infringer to pay over any illegitimate profits that are earned from the infringement. Another common remedy is injunction ordering the infringer to stop the illegitimate use of the trademark. And the last possible remedy is forcing the infringer to deliver up the infringing material that they've produced or that they tried to sell or market.