G toms house of pizza pizza made to perfection eg

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Unformatted text preview: ans, initials) Design marks (logos or words with logos) Distinguishing guises (product shapes or distinct packaging) Certification marks (quality or origin) UNIVERSITY OF ALBERTA ACQUIRING TRADEMARKS • Acquiring Trademarks – By use (Common Law) ™ • – Famous foreign trademarks will be protected to prevent confusion of local consumers By registration ® • • • Not required for ownership of trademark Not absolute proof of ownership Advantages of registration – – – Protection across Canada for 15 years » Can be renewed indefinitely Burden upon challenger to disprove ownership Risk management • Register all variations on mark, name, or logo UNIVERSITY OF ALBERTA TRADEMARK – TYPES • Ordinary marks – Distinguish goods and services with words or designs • • Certification marks – Demonstrate that goods or services meet standards • • E.g. “Tom’s House of Pizza®” “Pizza Made to Perfection™” E.g. “Recognized by the Canadian Dental Association” Distinguishing guises Identify unique shape of product or package – UNIVERSITY OF ALBERTA • TERM OF TRADEMARK • • • Protects the first user Specific classes of wares or services Canada – term is 15 years (renewable for additional terms) UNIVERSITY OF ALBERTA WORD – TRADEMARKS • • • • Fanciful or coined words/phrases Arbitrary usage Suggestive usage ‘Descriptive’ usage UNIVERSITY OF ALBERTA TRADEMARK INFRINGEMENT • Unauthorized use – • Knock-off – • Similar product and similar mark Trademark dilution – • Exact imitation Acts that tarnish the value of trademark Unauthorized importation – Of an authentically branded product UNIVERSITY OF ALBERTA PASSING-OFF • Elements of common law tort – – – • Name, mark, or logo attached to plaintiff Defendant created confusion in market Plaintiff likely to suffer Scope of tort – – – Protection for unregistered trademarks Acquisition of mark requires passage of time Protection limited to location of reputation UNIVERSITY OF ALBERTA TRADEMARK – CONFUSION • Factors that determine “confusion of consumer” – – – – – – Degree of similarity between marks Intent of infringer Similarity of two products or services Similarity of marketing of good or service Strength of the registered mark Evidence of Confusion UNIVERSITY OF ALBERTA TRADEMARK – DILUTION • Trademark Dilution – – – – – • Lessening of uniqueness Unauthorized use of another’s trademark Limited to famous marks Non famous mark – argue confusion Trademark loses capacity to signify a single source Types of Dilution – Tarnishment Defendant’s use is unsavory or unwholesome, or mark used in connection with inferior products U N I V E R S I (shoddy Equality) TY OF ALB RTA • TRADEMARK – DILUTION • Factors – – – – – – • Duration and extent of use of mark Geographical area Degree of distinctiveness Degree of recognition of mark Method by which the product was distributed and marketed (channels of trade) Use of mark by third parties Proving Dilution No need to show confusion – No need to show competition UNIVERSITY OF ALBERTA – Kodak case – no confusion (bikes) – REMEDIES FOR TRADEMARK INFRINGEMENT • Compensatory damages – • Accounting of profits – • Monetarily disgorge defendant’s wrongful gain Injunction – • Monetarily repair plaintiff’s wrongful loss Order prohibiting continued infringement Delivering up – Order req...
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This document was uploaded on 01/23/2014.

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