Does Your Font Add Character to Your Trademark?

Incorporating a font into the nominal component of a trademark can play a significant role in conveying a company’s identity and values, while enhancing its distinctiveness from others.

For instance, famous trademarks like Tesla, Kleenex, Ford, and Coca-Cola use distinctive fonts. Thus, protecting a trademark by incorporating its font can be wise; however, it is a crucial consideration in a trademark protection strategy and affects the scope of protection that can be achieved.

 

Impact on Trademark Protection in Canada 

When registering a trademark with the Canadian Trademark Registrar (the “Registrar”), the protection granted to a word mark that incorporates a font is narrower than that granted to a “standard character” trademark. A standard character trademark is defined as a trademark that “contains a combination of prescribed letters, numbers and symbols without any claim to a particular font, size or colour.” Thus, it is a word mark that does not incorporate any specific characteristic, including any font (a “standard character trademark”). 

 

Non-Standard Semi-Figurative Trademarks 

In the context of a trademark application, when a trademark claims or incorporates a font in its nominal component, the Registrar will treat it as a non-standard trademark. It will be considered a semi-figurative trademark, and the Registrar will require it to be digitized (a “non-standard semi-figurative trademark”). The resulting registration will then cover only the submitted digital representation. Consequently, if the owner of such a trademark wishes to later modify the appearance of their non-standard semi-figurative trademark, they may have to file a new trademark application to protect the new design. However, this requirement may be avoided if the modifications made are merely a minor acceptable deviation from the version already registered or pending application. 

 

Modification of a Trademark After Its Filing  

It is important to note that once a trademark application is filed, it is generally not possible to modify its representation or description. Minor modifications may be accepted, provided that the trademark remains essentially the same, and that the amended version is submitted to the Registrar before the application is published in the Trademarks Journal. Once the trademark is published and/or registered, no modifications of any kind are permitted. 

 

Risks of Cancellation 

Furthermore, if the owner of a registered non-standard semi-figurative trademark uses a version of the trademark that visually differs from the registered one, the registration of the non-standard semi-figurative trademark may be at risk of cancellation. In fact, anyone may request the cancellation of a trademark that has been registered in the register for three years or more for non-use. If the owner cannot prove that they have used their non-standard semi-figurative trademark in accordance with the registered design, the registration may be cancelled unless the modifications made are merely a minor acceptable deviation from the registered or pending version. 

 

Advantages of Standard Character Trademark 

In contrast, opting to register a standard character trademark provides broader protection for the textual component of the trademark. Regardless of the visual format used to represent this textual component in business activities—provided that the owner uses the same textual component (in terms of spelling and content) as that covered by the registered standard character trademark—the use of these different visual representations will be considered as use of the registered standard character trademark without risk of cancellation, as long as the trademark is in use, regardless of changes in visual representations.  

 

Protection Strategy 

Nevertheless, it may be strategically wise to register a non-standard semi-figurative trademark that incorporates a font, especially if the owner values the visual aspect conferred by the font for brand identification and recognition. In this context, it is often advisable to seek simultaneous registration of both the non-standard semi-figurative trademark and the standard character trademark, as this approach allows for broader protection. Indeed, the non-standard semi-figurative trademark protects the visual appearance, while standard character trademark registration ensures that the text of the trademark is protected independently of its visual representation.  

 

Copyrights and Fonts

It is important to note that while fonts may be incorporated into the textual component of a trademark, a font alone cannot be registered as a trademark due to its utilitarian purpose. However, fonts themselves can be protected by copyright. Therefore, before incorporating a font into your trademark, make sure you have the necessary permissions. Most fonts are either in the public domain or available with a free licence. However, if you choose a custom font created specifically for your trademark, it is advisable to obtain an assignment of the copyright for that font or a specific licence for its commercial use.

 

Our strategic trademark team can assist you in assessing the benefits of registering your non-standard semi-figurative trademark and/or your standard character trademark, while advising you on the legal issues related to these choices.