For many, a new business reality has emerged from the COVID-19 pandemic and ongoing financial recovery. The fact is that organizations have vaulted years ahead to digitize at least some part of their business, value proposition and brand through moving online. For example, we have all seen retail stores shifting to online ordering and delivery, and health professionals delivering online virtual care.
Moreover, operating digitally online as a means of staying in business has forced many businesses to look upon their intellectual property assets as quite valuable. However, for some businesses, this has meant addressing trademark infringement and other unauthorized activities relating to social media accounts, domain names, online user handles and other online challenges related to trademark rights and domain names.
As a lesson learned, taking a holistic approach to protecting your company’s trademarks and domain names has become critical to leveraging your online brand, social media platforms and business identity.
In terms of intellectual property (IP) best practices, here are some practical tips:
Tackle the process of trademark (and domain name) clearance head on. As a rule of thumb, the more trademarks and domain names taken overall, the less available they become. Moreover, given the changes to Canadian trademark law effective June 17, 2019, the process of clearance searches has become more complicated and costly, and being the first to file a trademark application is very important. Thus, always obtain a clearance opinion before you spend your money and time creating a new brand and identity.
Always investigate thoroughly before asserting rights online, filing trademark applications or securing domain names. Please make sure you have conducted proper trademark searching and comprehensive clearance which may include common law sources (e.g. websites, social media sites, social media handles, hashtags, Internet Archive, etc.) to properly determine availability of a proposed trademark or domain name.
In some instances, you may be required to think outside the box. For example, where your brand is primarily an online brand, a domain name can be critical where a trademark is not registrable (e.g. descriptive words or not inherently distinctive in Canada). In this case, you may not want to file a trademark application if you cannot secure a domain name.
Your domain name should be treated just like any other intellectual property asset. Securing your domain names should always be part of the important initial trademark searching process and not just an afterthought. However, unlike other forms of statute-created intellectual property which require filing an application in a national intellectual property office like the Canadian Intellectual Property Office (CIPO), a domain name creates a contractual right to use a specific domain name with one owner per unique domain.
Should you require any assistance, please contact us to schedule an initial telephone call.