The Monthly IP Bulletin
A Canadian Intellectual Property & Branding Law Newsletter.

March 2016
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I would like to continue the discussion concerning developing effective brand management policies. This month I would like to discuss records retention.

This is a difficult issue because many people do not think about it in advance, but I have been involved in cases where multiple brand names are an issue and the brand owner has had difficulty in providing information about a specific brand since the relevant information is only available for the multiple brands collectively. Also, this type of problem can frequently be an issue in oppositions and section 45 proceedings.
Records Retention

It is important for the brand owner and trademark counsel to have retained records available concerning the brand name's history, including the identity of the owner, the date of first use together with dated examples of product packaging and advertisements showing actual use. These records should be retained in a systematic fashion for the life of the brand.

These records can be extremely valuable in the context of oppositions, section 45 proceedings or trademark litigation. The initial designs of labels and packaging can help establish claims for copyright relating to such works. In addition, such evidence can show the extent to which the brand name has become known which will in turn affect the brand owner's ability to protect it.

Retained records should include the following representative, dated material relating to the branded goods or services:

a)   labels;

b)   bills of lading and other shipping documents;

c)   invoices;

d)   advertisements;

e)   point of sale signage;

f)    computer control labels;

g)   catalogues;

h)  invoices and other bills relating to the preparation and reproduction of labels; and

i)    other materials displaying the brand name.

Such material together with sales figures can provide the basic evidence required in a trademark opposition, an action for infringement or to show trademark use in a section 45 proceeding.

Demand letters and actions taken to preclude third parties from using confusingly similar trademarks or trade names or otherwise misusing the brand owner's intellectual property should also be retained. This type of material can provide evidence that the brand owner has diligently protected its rights.

This type of record keeping will be particularly important where a trademark has been assigned since the trademark must become distinctive of the new owner after the assignment. In such cases the new owner must engage in a program to bring to the attention of the relevant portion of the public that it is the owner of the mark and the source of the goods or services. If the new owner maintains appropriate records, they will help show that this has in fact occurred. Records retention is also important if the trademarks have been licensed.
 
Canadian Intellectual Property Law & Strategy 2015 Edition
 
The 2015 edition of the above-noted text has now been published by LexisNexis.  This book was written to explain to practitioners outside Canada how the Canadian legal system works for trademarks, copyright and industrial designs.  If you are interested, a link to the LexisNexis store is available here.
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Goldman Sloan Nash & Haber LLP
480 University Avenue, Suite 1600
Toronto, ON, M5G 1V2
mckeown@gsnh.com
Direct Line: (416) 597-3371
Fax: (416) 597-3370
www.gsnh.com
 
These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.

 
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