Once it has been decided to seek a trademark registration a trademark owner needs to
consider what is taking place in the marketplace to ensure that its rights are not being
infringed by third parties and are being maintained. This means that all employees must
be on the lookout on a continuing basis for cases of infringement. Consideration should
also be given to obtaining the assistance of professional watch service companies, to
monitor applications for trademarks filed by third parties and to look for infringement in
the marketplace, particularly on the Internet.
If infringement is occurring demands should be made and proceedings can be brought
to assert the owner’s rights under Trademarks Act. Third party applications for marks
that are potentially confusing with the trademark owner’s mark can be opposed. If the
trademark owner fails to assert it’s rights, the distinctiveness of the owner’s mark may
be put at risk.
As the protection of trademarks is territorial, when a brand name is used in other
countries separate coordinated protection measures must be implemented in each
country.
If you have questions, please contact me at mckeown@gsnh.com.
John McKeown
Goldman Sloan Nash & Haber LLP
480 University Avenue, Suite 1600
Toronto, Ontario M5G 1V2
Direct Line: (416) 597-3371
Fax: (416) 597-3370
Email: mckeown@gsnh.com
These comments are general in nature and not intended to provide legal advice as
individual situations will differ and should be discussed with a lawyer.