This time of year is for me always a thrilling time for renewal. I still recall the excitement I felt when I chose my business name one January several years ago. Like many of you, there is a story behind why I chose the name I did and since then the name anchors and motivates me to keep working at my business to make it the best it can be. So, for those of you embarking on a new entrepreneurial endeavour in 2017, I thought I would share some insights to help you get going with a great name and on an intellectual property savvy note.
- Choosing a Name for Your Business – Do a business name and trademark clearance search.
Bottom line, choosing a business name has to be done carefully. You have to choose a name which is not too similar to a competitor’s name and which can become distinctive of the goods and services you will be providing.
Once you zero in on a potential name, it is best (and in some cases required) to conduct name clearance searches. These searches are done before registering a corporation, partnership or sole proprietorship to carry on business in Canada and to use a name as a trademark to brand your business.
Just because you can register a business name does not mean, however, that you have clearance from a trademark point of view. While promising to get into the details in a future blog post, just keep in mind, for now, that a business name identifies your business and a trademark is a way of distinguishing your goods and services from the goods and services of competitors. These two different applications of a name require different types of searches.
For under $50 you can start with a NUANS search, which can be requested through a number of service providers online, or by your corporate attorney, if you are working with one. Depending on the results, you can get a more complete trademark (clearance) search done by a trademark agent. The cost of a robust trademark search can vary depending on how thorough you need it to be, but will typically range between $600 to $850.
Investing in these kinds of searches could save you thousands in the short and long term. The financial and reputational costs associated with defending against allegations of trademark infringement add up quickly when you have to account for rebranding, legal defence and lost business opportunities. An initial consultation with a trademark professional can help you better understand your particular business context for the purposes of getting the best risk assessment bang for your due diligence search buck.
- Getting a Logo for Branding – Ensure you have the copyrights you need to use it in all business activities.
A logo is a design graphic with or without words, and may or may not include your business name. It is intended to be used as a trademark and can obviously become a powerful branding tool. Before a logo takes on the quality of trademark in the hands of a business owner, however, the question of copyright clearance must first be addressed.
As designs, logos typically have sufficient aspects of original expression to be regarded as artistic (visual) works, protected by copyrights upon creation. In Canada, when a graphic design artist is hired as a contractor to create an original logo, he or she still owns the copyrights in the logo even if paid to create it by a business owner. While the business owner will have certain rights to use the logo in their business by virtue of the arrangement with the graphic design artist, those rights will not necessarily be unfettered. For example, if a graphic designer creates a logo for use to brand health food products, the business owner would not necessarily have the rights to later on use the logo to brand candy products.
The only way for a business owner to eliminate doubt about using a logo in connection with different business activities, is to get a written assignment of copyrights and waiver of moral rights from the graphic design artist once the logo is created. Alternatively, the business owner can ask the graphic design artist to confirm by way of a written license or consent document the scope of their rights to use the logo.
After the question of copyright clearance has been addressed, the question of trademark clearance still applies as described above for business names, since it is not unusual for independently designed logos to take on similar appearances in certain industries. If you are concerned about costs mounting up, then do your best to make sure the logo you get designed is distinctive, and check in with a trademark professional that can help you assess the risks of searching or not searching for similar designs in relation to your particular business context.
With that said, let me take a moment to conclude by wishing you all a fabulous New Year of business success in 2017. Let’s make Canada’s 150th the best year yet for Canadian Small Business Women!
Ariadni Athanassiadis is the lead attorney of Kyma Professional Corporation, which provides intellectual property (IP) legal services to help your business develop and benefit from the creative efforts and assets that make it distinctive. Whether it is your brand, product, services, designs, technology or business processes, Ariadni can help design IP legal solutions which let you make the most of what you give to your business.
Kyma Professional Corporation