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Protecting Your Brand With Trademarks & Copyrights

How does a cannabis retailer protect its brand names and logos?

Brand names and logos can be protected through trademark law. You can acquire certain trademark rights simply by using your brand name or a logo in association with your goods or services, but generally speaking those rights are geographically limited and difficult to enforce. Applying to the Canadian Intellectual Property Office (CIPO) for a registered trademark is preferable, because the owner of a registered trademark gets exclusive rights to use the trademark throughout Canada for a renewable period of 10 years. That includes the right to stop someone from using a brand name or logo confusingly similar to yours anywhere in Canada.

The trademark application process isn’t easy; there are many steps and it can take 2-3 years to get registered.  Not all trademarks are registrable either. For example, your trademark might not be registrable if it’s too descriptive (e.g. “The Cannabis Store”) or if there is another trademark already registered that is the same or confusingly similar to yours.

That’s why it’s extremely important to conduct due diligence on your proposed trademark before you invest in it. You want to find out what else is already out there, not only to increase your chances of registrability, but also to ensure you’re not infringing on someone else’s pre-existing rights. You should speak to a lawyer or trademark agent about this due diligence work; do not assume your advertising agency or graphic designer is aware of these issues.

Don’t forget your trademark must also comply with s. 17 of the Cannabis Act, i.e. it can’t be appealing to young persons or evoke a lifestyle of glamour, recreation, excitement, vitality, risk, or daring.

How does a cannabis retailer protect its marketing materials and design work?

Another way to protect your business’ logo is through copyright law, which can also protect your other marketing materials and design work. Unlike a registered trademark, copyright subsists in these materials automatically by virtue of their creation. Copyright law, among other things, prevents others from using or reproducing these materials without the owner’s authorization.

The key aspect of copyright is establishing ownership. In most employment relationships, the employer automatically owns the copyright in its employees’ work product. This is not the case for independent contractors, who retain copyright in their work product unless there’s a written agreement to the contrary.

What this means for cannabis retailers is that if you work with designers, photographers, or other content creators on contract, it’s imperative you implement copyright assignments so that you become the owner of the content they create. One of the most important assignments is for your logo; you don’t want your designer inadvertently retaining residual rights in this important asset.

It’s a good idea to include copyright assignment provisions in your employment contracts too, even though employees’ copyright is usually automatically assigned. The assignment provisions will make the parameters of the assignment clear and help your employee understand what they can and cannot do with the content they create. Not just for copyright reasons, this is also important so your employees don’t use photos or posts they create in the course of their employment in a manner that might be offside the strict advertising prohibitions in the Cannabis Act, such as outside the 19+ arena.

What other aspects of a cannabis retailer’s business qualify for intellectual property protections?

Believe it or not, there is a type of trademark law that can protect your store layout, the look and feel of your website, or other distinctive display features of your business. This protection is called “trade dress” and is the “total image” of a business’ good or service, as defined by its overall composition and design, including size, shape, colour, texture, and graphics. Whatever these features are, they make the consumer associate that “total image” exclusively with your goods and services.

Cannabis retailers in Canada are known for their stunning store layouts and unique design configurations, from beautiful “smell bars” to creative product delivery mechanisms. Trade dress rights may be an available protection for some of these display features, which include the right to prevent others from taking advantage of the goodwill attaching to them (known as “passing off”).  Trade dress rights can arise automatically through use, albeit in a geographically limited fashion, but there is also a mechanism to register such rights with CIPO if certain conditions are met.

Emilie Feil-Fraser is an intellectual property lawyer based in Vancouver at the international law firm of Gowling WLG (Canada) LLP.

Tags: Cannabis Act (41), cannabis legal advice (3), copyright law (1), Emilie Feil-Fraser (1), Gowling WLG (Canada) LLP (1), intellectual property (1), trademarks (1)