The Seven Deadly Sins of Trade-Mark Owners
The Seven Deadly Sins refers to a list of the most objectionable vices known to mankind, namely: wrath, greed, sloth, pride, lust, envy, and gluttony. While most trade- mark agents and lawyers are no doubt completely free of any such vices (What? Why are you laughing?), in my years of practice I have sometimes noted that the same cannot be said for many trade-mark owners.
Wrath, also known as anger or rage, is defined as “inordinate and uncontrolled feelings of hatred and anger”. Does this sound like any trade-mark litigation matters that you are involved with? While trade-mark litigation or opposition is necessarily adversarial, trade-mark owners should refrain from proceeding on the basis of anger, impatience, or revenge. Opposition or litigation matters should be entered into with a view to achieving a specific objective of the opponent / plaintiff, not due to a personal vendetta or dislike for a competitor.
Greed is a sin of excess, an inordinate desire to acquire or possess more than one needs or deserves. Trade- mark owners often face real business decisions about what trade-marks to protect. For example, owners often face decisions about whether to file for a word mark, a design mark, or both, or whether to include a colour claim in their trade-mark application. A good trade-mark lawyer can advise their client with respect to these decisions.
Sloth is more commonly known as laziness or a failure to utilize one’s talents and gifts. In Canada, it is the trade- mark owners’ responsibility to police the marketplace and take steps to enforce its legal rights where necessary. Sometimes, trade-mark owners will go through the registration process, but then they will get lazy and fail to take any steps to enforce their legal rights. The real danger of laziness is that when one finally decides to enforce their legal rights, these rights may be diminished due to a clouded marketplace.
Pride is considered to be the original and most serious of the seven deadly sins. It is identified as “a desire to be more important or attractive than others…and excessive love of self”. In the trade-mark context, some owners are in serious LOVE with their trade-marks, and are constantly trying to be more important or attractive than others. This pride in one’s mark often manifests itself in unsubstantiated lawsuits against third parties, because the owner is convinced that its mark is entitled to greater protection than it actually is. While it’s important to en- force your trade-mark and exercise your legal rights, it’s also important to understand the true nature of your legal rights.
Lust generally refers to “excessive thoughts or desires of a sexual nature”. If your trade-mark is a little too “lusty”, you may find yourself afoul of section 9(1)(j) of the Trade-marks Act, which prohibits “any scandalous, obscene or immoral word or device”.
Envy is committed when an individual “resents that an- other person has something they perceive themselves as lacking, and wish the other person to be deprived of it”. It is not uncommon for trade-mark owners to be envious of a competitor’s trade-mark, and to seek to infringe the trade-mark rights of that competitor. While imitation is the greatest form of flattery, when it comes to trade- marks, a distinctive mark is one that contains inherent distinctiveness, and not a mark that simply envies or copies another trade-mark.
Gluttony is the “over-indulgence or over-consumption of anything to the point of waste”. Trade-mark owners can at times over-indulge when it comes to setting out their statement of goods and services in a trade-mark application. In Canada, applicants are only required to pay one official filing fee regardless of the number of goods and services listed in the application. However, I regularly advise clients to only include those particular goods and services that they reasonably foresee themselves entering into. By listing many goods and services, an applicant is more likely to face objections from the Trade- marks Office, and oppositions from third parties.
If you’ve committed one or more the above sins and need to confess to your trade-mark lawyer, please contact the author directly.
This article was originally published in the August 2010 edition of the Perlaw Reporter.