Much of our daily lives has changed as a result of the COVID-19 pandemic and some of these changes are likely to be enduring. Some of us take great comfort then, in the fact that the Trademarks Act remains constant amidst such upheaval.
That does not mean that all is business as usual. Brand owners, like all of us, are adapting to this new world and trying to make the best of it. They should remember, however, that (1) current trademark rights and obligations continue and (2) making changes to an existing trademark to reflect or comment on the pandemic may have implications for their brand.
Trademark law is not suspended
Many of us have "moved online" and there is an incredible surge of innovation as businesses, educators, artists, fitness instructors, and various public institutions, such as museums and libraries, are launching incredible new online offerings. This innovation is exciting and, although trademark law has not changed as a result of the pandemic, our new way of living may pose new challenges.
Any use of someone else's name, logo, or even sound without permission and where it might dilute the value of that mark could be trademark infringement. This includes the use of names or logos of businesses, sports teams, bands and gyms. Before using someone else's mark, remember to consider whether you have permission to do so and whether your use might be infringing.
Modifications to trademarks
An interesting development in the trademark world in response to the pandemic is that some of the most iconic trademarks in the world have been tweaking their logos in order to re-frame how consumers physically see, and conceptually perceive, their brands and what they stand for. Trademark owners generally fight tooth and nail to maintain the integrity of their word marks and their design logos but we are starting to see brands consciously changing their marks to use them as vehicles of social commentary.
Some of the changes include spacing the letters within the logo further apart to encourage people to respect the social distancing recommendations that our government officials and medical professionals have been encouraging us to adhere to. Another example was the removal of a mascot from a logo altogether, claiming the character is self-isolating at home. Very clever marketing tools but does altering your logo have an impact on the overall strength of your mark?
If you are considering tweaking your logo please keep in mind that use of the trademark must relate to the mark as registered. Some deviations of the mark are permissible while others might lead to cancellation of the registration. The two part test to apply is :
- the registered mark must be recognizable and
- the deviating mark must preserve the same dominant features - variations must be so unimportant that they don't have the effect of misleading the consumer.
As an added layer of protection, you might consider filing the modified mark with the Canadian Intellectual Property Office.
In closing, let's be reminded of the International Trademark Association's (INTA) ACID test[1] when determining if we are using a mark correctly.
- Adjective: Trademarks should never be used as nouns or verbs but instead as adjectives. For example you blow your nose into a KLEENEX® tissue, you don't blow your nose into a KLEENEX®.
- Consistent: Your Trademark should be identical, or as close to identical as possible, every time it is used.
- Identified: the ™ symbol should be used for applied for Trademarks, while the ® symbol should be used for registered Trademarks.
- Distinctive: When using your Trademark in a text, you should either use CAPS or italicize the Trademark in order to make it easier to spot.
By applying these standards to your Trademarks, you are building your brand strength while helping clients properly identify the source of your goods and services.
In this time of fast-paced change juxtaposed with unprecedented stillness, take care to balance the exciting launch of a new project with a moment of reflection about your trade-mark rights and obligations.
This article was co-authored by Brian N. Slatford, a trademark agent in training.
[1] International Trademark Association's (INTA) ACID test https://www.inta.org/Media/Documents/2012_TMUseMediaInternetPublishing.pdf
