Pay Me Now or Pay Me Later

I have been working on some trade-mark opposition work lately; the kind of work that involves advocating against the registration of a trade-mark.  We do this sort of thing when a client has registered or unregistered trade-mark rights and where someone else is trying to register a trade-mark that is confusingly similar.


Opposition work is inherently frustrating.  The government fees associated with filing oppositions are almost three times as high as those involved with an application.  The evidentiary burdens are higher with opposition work.  The amount of time and effort spent in correspondence with CIPO and opposing counsel is significantly higher in opposition work.  Correspondingly, the legal bill associated with opposition work is much higher than with application work.  Put another way, the cost of making an application in the proper format, at the proper time, is substantially lower than the cost of maintaining trade-mark rights after the fact.


And the opposition process is only one form of dispute resolution.  Injunctive relief, passing-off litigation and motions at the Federal Court are a few of the choicer (and costlier) ways of dealing with trade-mark squabbles.  And all of them are exponentially more expensive when the trade-marks in question are not properly registered, maintained and protected.


I always try to drive this point home with clients.  It is of particular importance to smaller, newer businesses, or businesses with new product lines.  Branding is everything.  Commensurately, the proper legal foundation for that branding is of the utmost important.  And while there are few guarantees in law, I can assure you of this – if you have a successful brand, and that brand is not secured to the full extent available under trade-mark law, you will pay thousands or tens of thousands, or perhaps hundreds of thousands or maybe even one million dollars (*raises pinkie finger to pursed lips*) in trade-mark disputes throughout the life of the brand.


Call us and sort it all out before it comes to that.


Scott R. Young