brands, trademarks, and advertising

Brands, Trademarks, and Advertising

Karin Binder, Trademark AgentJohn G. Leckie, Partner

January 27, 2016

What is a Brand?

A Brand is comprised of:• Product / Service• Packaging “get up” • Brand name and/or logo• Promotion and advertising

Appeal to the customer• Physical, aesthetic, rational, emotional

A brand embodies everything of value a company offers

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What is a Trademark?

A “trademark” is a word, design, symbol, sign or other device capable of:• distinguishing the wares or services of one company from those

of another (a source identifier)

Not generic words Not names for new products Different from trade names

• a Corporate Name Registration per se does not necessarily entitle the company to use its name as a trademark

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Why conduct a Trademark Search?

Identify potential issues with a trademark• Oppositions;• Infringement;• obstacles requiring defence of your trademark (i.e. confusingly

similar marks); and• Dilution

Save time and money• Find out up front whether trademark will encounter issues• Minimize risk of investing in branding, websites, advertising

campaigns, etc. only to find out that the mark you invested in can’t be registered

Once cleared; apply to register the trademark

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Why register your Trademark?

Minimize Uncertainties

Registered Trademarks are regulated by the Canadian Intellectual Property Office and valid across Canada; Common Law Trademarks are regulated by the Courts and geographically restricted to the area in which you can show (i.e. evidence) a goodwill/reputation.

• Registration grants exclusive rights• Registration is prima facie evidence of rights• May prohibit others from using (and registering) confusing

trademarks• Can sue for infringement• Investors want to ensure you own your IP rights

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Proper Use Use, use, use – failure may result in loss of rights “Use” has special definition:

• …at the time of transfer of the goods…in the normal course of trade…the trademark is applied on the goods themselves or the packaging…

• …with services if the mark is using or displayed in the performance or advertising of those services…

Use as registered (or re-apply) Don’t allow others to use without a licence Label and advertise correctly (also on websites!)

• Do NOT use as a Noun Wrong: Phone me on my BLACKBERRY Correct: Phone me on my BLACKBERRY smartphone

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Proper Use

• Do NOT use as a Verb Wrong: BBMing is free Correct: Texting on the BBM messaging application is free

• Do NOT use in plural Wrong: These game apps are available on BLACKBERRIES Correct: These game apps are available on BLACKBERRY smartphones

• Do NOT use in possessive• Wrong: BLACKBERRY’S battery life is superior• Correct: The battery life of BLACKBERRY smartphones is superior

Are you using your trademark properly? Here’s a TEST:1. Remove the Trademark from the sentence in which it is used;2. Ask yourself if a complete sentence remains

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Proper Use

Consistency builds strong trademarks

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Marking

Use proper marking• ® - Registered Trademark• MD – Marque Déposée, French registered trademark• TM – Unregistered Trademark• MC – Marque de Commerce, French unregistered trademark

Why?• Product branding and awareness• Provides notice of your registered trademark• Also important when licensing

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Summary

Budget Search to Clear Register Use and Avoid Losing

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1. Basics of Advertising Law

2. Recent Enforcement Activity

3. Contests and Promotions in Social Media

4. Other Social Media Issues and Risks

5. Endorsements and Bloggers/Influencers

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Introduction

Basics of Advertising Law

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Competition Act

Prohibits making representations that are false and misleading in a material respect

Penalties:• Individual: $750,000 and

$1,000,000 for subsequent order• Corporation: $10,000,000 and

$15,000,000 for subsequent order

Not only the literal words, but the general impression of advertising must be truthful

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Basics of Advertising LawClaim Substantiation The Competition Act requires advertisers to have adequate, proper

and current tests to substantiate claims regarding performance, efficacy and length of life of products

Substantiation will vary depending on the claim:

• Consumer preference claims: survey evidence• Performance claims: technical data to support

Price Claims The Act also prohibits misleading price claims:

• In order to claim a “sale”, must comply with time or volume test

• Time Test – the retailer or advertiser must offer the product at the regular price in good faith for a substantial period of time

• Volume Test – at least 50% of the volume of stock must have actually been sold at the regular price

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When advertising goes wrong …

Money spent on fines, correction notices and lawyers

Class action lawsuits Competitive disputes are costly

and could cause counter-attack Company can be put on Bureau

Consent Order watchdog list Reputation diminishes

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Recent Enforcement Activity

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"Consumers are entitled to clear and precise information when making their purchasing decisions and need to be confident that the information they receive regarding additional fees is truthful and accurate.“ – John Pecman, Commissioner of Competition

Bureau alleges that the car rental companies have engaged in misleading advertising by:• charging more than advertised rental charges (by failing to disclose

certain non-optional fees consumer are required to pay)

• mischaracterizing these non-optional fees, when disclosed, as taxes, surcharges or fees that the rental companies are required to collect from consumers, as opposed to mere costs recovery by the companies)


Competition Bureau vs. Avis/Budget

Competition Bureau has filed a Notice of Application seeking $10 Million “administrative monetary penalty” against each of Avis, Budget and their parent companies

Application also seeks a 10-year prohibition order, corrective advertising and consumer restitution order

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"We take misleading advertising very seriously" (…) "Consumers deserve accurate information when making purchasing decisions and need to have confidence they are not being misled by false advertising campaigns.” – Melanie Aitken, Former Commissioner of Competition.

Rogers, Bell and Telus were all sued by the Bureau in 2012 in relation to failure to disclose certain extra costs for certain texts and apps referred to as “premium rate digital content”. Telus has since agreed to give rebates of up to $7.34 million to customers who incurred premium text messaging charges.


Bell Canada agreed to a $10 million penalty relating to undisclosed mandatory fees in wireless, home phone and internet, such as touch-tone fees or modem rental fees. Fees were buried in fine print in a manner which the Bureau considered “hidden”.

Bell also agreed to pay 1.25 million in relation to the posting by employees of fake reviews of apps without disclosing that they were employees.

Rogers was ordered to pay a penalty of $500,000 in relation to false and misleading claims that its CHATR brand wireless service had fewer dropped calls than other carriers.

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Contests and Promotionson Social Media Platforms

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Contests and Promotions

Online and Social Media Contests Be aware of platform terms and guidelines Be very clear who is eligible Limit to one entry per person Institute a comprehensive “glitch” disclaimer Obtain rights to any material you are asking participants

to submit Limit to adults or get parental consent Beware voting fraud (where public voting involved)

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Contests and Promotions

Minimizing Exposure (Consumer Generated Content):

Ensure rules/terms CLEARLY explain types of materials that are NOT permissible

DO NOT allow material to be directly posted online without first being passed through a content moderator

ALWAYS reserve the right to remove and/or disqualify materials AT ANY TIME and FOR ANY REASON

Allow users of the site to contact you regarding any material on your site that they consider inappropriate

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Other Social Media Issues and Risks

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This is Important …

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If you are looking for RISK FREE…. then social media is NOT your playground

This is Important Too!

Always Remember: Advertising on social media sites is still subject to the same basic rules, regulations and policies that apply to other more traditional forms of media. • contest law; • false and misleading advertising; • privacy law; and• IP infringements.

BUT … you also now need to consider each social media sites’:• terms of use;• licences; • advertising guidelines; and• contest and promotions guidelines.

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Social Media Policies

Posting Policy:

The rules that community members must follow when posting content. For example:

• users must have the rights to all materials they post;• opinions appearing on the site are not necessarily those of

company; • posters agree to keep their posted content civil, and not to post

offensive materials; and • An employee posting policy is also recommended.

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Endorsements and Bloggers/Influencers

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Bloggers, Brand Ambassadors and Influencers

Disclose “Material Connection” Ensure posting guidelines and policies are followed Have them sign an “Influencer Agreement” covering:

• responsibilities;• arrangements for delivery of samples of products for Influencers

and their followers to try or be awarded as prizing;• the frequency and number of posts the Influencer is expected to

deliver;• a Code of Conduct to be followed in terms of both posts and

conduct of the Influencer/ambassador at public-facing events;• the consideration to be paid to the Influencer and method of

disclosure of that payment; and• any exclusivity arrangements.

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Bloggers, Brand Ambassadors and Influencers

Be sure to specify:• that testimonial statements must reflect real experience of

product or services;• acceptable and unacceptable statements about products or

services;• how relationship between advertiser and ambassador will

be disclosed;• how product or services will be tested by ambassador;• media and timing of statements about products and

services; and• Employees must also disclose their connection.

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Thank You

montréal · ottawa · toronto · hamilton · waterloo region · calgary · vancouver · beijing · moscow · london

John G. LeckieTel: 604.443.7603Email: [email protected]

Karin BinderTel: 604 891 2729Email: [email protected]

Thank You

montréal · ottawa · toronto · hamilton · waterloo region · calgary · vancouver · beijing · moscow · london

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