Top 5 trademark considerations every CleanTech entrepreneur should know

21 January 2021


The growth in global demand for clean technology is creating a more competitive market where the competition for brand recognition has never been fiercer.  This article reviews the top 5 considerations for cleantech entrepreneurs to protect their brand and trademarks.

1. Develop a strong brand

A brand can encompass many different aspects of your business and marketing strategy, but its essential function is to ensure it distinguishes your products and services from those offered by other traders in the marketplace. One of the best ways to protect to your brand is with registered trademark protection.

Trademarks are usually comprised of words and designs, but sounds, colours, textures, tastes, scents, moving images, three-dimensional shapes, modes of packaging and holograms can all be protected as registered trademarks if they serve to distinguish your products and services from those offered by other traders.

Creating a strong trademark and protecting it should be a priority for every new venture or business offering. The strongest trademarks are unique and fanciful (i.e., they do not describe any characteristics of your products or services and they do not serve a functional purpose).

2. Make sure your trademark is available

It is important to check that a trademark is available for use and registration before you commit to it. Conducting a trademark availability search can help you to assess if there are any earlier marks (on the Trademarks Register or in the marketplace) that will be likely to act as an obstacle to the use and registration of your trademark.

Availability searches can vary from a quick high-level review of the Trademarks Register in one country to a comprehensive investigation of the Register and select marketplace directories across multiple jurisdictions. It is best to speak with a professional about what level of searching is most suitable for your needs and your budget.

3. Register your trademark

A Canadian trademark registration has many benefits, such as:

  • providing an exclusive right to use a trademark throughout Canada with specified products and services;
  • providing additional enforcement options against third parties;
  • registrations makes it easier to buy, sell and license trademarks; and
  • registrations can be renewed every 10 years (indefinitely).

It is important to remember that a business or corporate name registration does not provide the same rights as a trademark registration. Rights can be developed through use without registration, however, these 'common law' rights are territorially restricted and they are usually more costly to enforce.

4. Protect your trademark overseas

If you are planning to operate overseas then you should protect your trademark in each of your key export markets, and you may also want to consider protection in countries where your products are manufactured. Failing to secure adequate protection overseas can mean that you are locked out of a market or forced to rebrand where your trademark is at risk of infringing prior rights.

It has never been easier for businesses in Canada to secure trademark protection overseas. Canada joined the Madrid Protocol on June 17, 2019, which is a centralized international trademark filing system. A Canadian trademark application (or registration) can now be used to file a single International application that can cover up to 122 different countries. With a streamlined process for filing and maintaining overseas trademark registrations the Madrid Protocol provides access to an efficient and cost-effective procedure for securing trademark protection overseas.

5. Keeping your trademark registration in good standing

After a trademark is registered it is up to the trademark owner to ensure that the trademark is used properly. This includes challenging third parties that make improper or uncontrolled use of your trademark, and controlling your own use to ensure that your trademark does not become a generic name for your products or services.

A trademark registration can also become vulnerable to cancellation on the basis of non-use of the mark. The period of non-use that can lead to vulnerability for cancellation varies depending on the country of the registration, but it is usually between 3-5 years.

Top 5 takeaways:

  1. Creating and protecting a strong trademark is essential for developing a brand that sets your business apart from the competition.
  2. Before you adopt a new trademark it is important to check that it is available for use and registration.
  3. A trademark registration is a valuable asset and it can provide many practical benefits to your business.
  4. Trademark registrations should be secured in key export markets.
  5. A registered trademark must be used and enforced to keep the registration in good standing.

NOT LEGAL ADVICE. Information made available on this website in any form is for information purposes only. It is not, and should not be taken as, legal advice. You should not rely on, or take or fail to take any action based upon this information. Never disregard professional legal advice or delay in seeking legal advice because of something you have read on this website. Gowling WLG professionals will be pleased to discuss resolutions to specific legal concerns you may have.