In CDSBC’s 2016/17 Annual Report, there are a total 3652 registered dentists in British Columbia. There are also 700+ dental clinics currently operating across Vancouver and the Lower Mainland.
With more practices entering the marketplace, how do you ensure that your brand identity and reputation is protected amongst the growing competition?
We cover the most important trademark factors that dentists should keep in mind before they decide to name their new practice or perform a full scale re-brand.
Business Incorporation and Trade Names are Not the Same as Trademark Registration
There is a common misconception with many dentists who incorporate their dental practice that incorporation and/or securing a trade name alone grants them automatic trademark protection for their practice name…it does NOT!
Incorporation and securing a trade name does not provide the same protection as a trademark.
For example, consider a situation where you incorporate your practice and begin operating under the trade name “Big Mountain Dentistry” and a new clinic decides to use the same or similar name, such as “Big Mountains Dentistry”.
This new clinic may be using that name for their practice, on their website and/or other promotional materials. Given the increasingly competitive marketplace, the new clinic may also be using your trade name for online marketing purposes, to drive traffic away from your website to their own website.
Without a registered trademark, you are generally limited to common law remedies to protect your name, which are – generally – harder to enforce. A registered trademark will provide you with one of the strongest bundle of intellectual property rights in Canada – and rights to your trade name throughout Canada.
In order to maximize legal protection for your brand, you should strongly consider filing for trademark registration.
Be Aware of Registration Restrictions
Unfortunately, not all dental brand names are registrable due to rules set forth in Canada’s Trade-Marks Act. Below are examples of common restrictions which prevents a mark from being registrable and possible alternative solutions to work around them.
1. You cannot trademark only your full name or surname
If your name is John Smith, you cannot trademark the words “John Smith” or “Smith”.
However, there’s a higher chance that your name can be registrable if you add extra word(s) relevant to your business like “Dr. Smith’s Dental” or “John’s Dentistry”.
2. You cannot trademark a geographical location from which your goods and services originate.
If a mark contains the name of a geographic location from where the goods or services emanate, then the mark is clearly descriptive of the place of origin and not registrable.
For example, you can not trademark the phrase “Vancouver Dentist”.
3. You cannot trademark a word or design that could be confused with a trademark that has already been registered.
For example, you want to trademark the name “Smiley Dentistry”, but there is a trademark already registered with the name “Smile Dental”. Those two names could be viewed as confusingly similar.
Avoid commonly used words in the trademark database when creating your brand name. Some examples of commonly used words or phrases that pertain to dentistry include:
Consider what words are commonly associated with dentistry. When the name you register is distinctive, you will be building a brand for your company that will stand apart from your competition and minimize the risk of infringement.
4. You cannot trademark a word or phrase that clearly describes your goods and services.
This is pretty straight forward. If you are in the business of cleaning teeth, you cannot trademark the phrase “Cleaning Teeth”. Furthermore, if you are not permitted to trademark “Cleaning Teeth” in English or French, you cannot get around this by saying the same thing in another language.
There’s no way around this one!
5. You cannot use a mark that is clearly misleading
For example, you provide orthodontic services and try to register the trademark “gum doctor” for those services. This would be considered a deceptively misdescriptive mark if you as an orthodontist are not providing periodontic services.
Hire an Intellectual Property Lawyer to Conduct a Comprehensive Trademark Search, Provide Legal Analysis and an Opinion
Before you file for your trademark application, you need to complete a trademark search to ensure that the same or similar name has not been registered. It is important to retain an experienced trademark lawyer to help assist you in this process.
An experienced IP lawyer is able to prepare a comprehensive trademark search report, with legal analysis and opinion which will preemptively mitigate most potential issues during your application.
It generally takes anywhere from 12-18 months to have a trademark approved for registration by the Canadian Intellectual Property Office (CIPO).
Better get it done right the first time!
If you’re considering opening a new practice, protecting an existing trade name or slogan, or if you’re re-branding – keep these important takeaways in mind:
- Incorporating your business or securing a trade name does not provide you with the same protection as a registered trademark
- Make sure your trade name/brand name is registrable
- Retain an experienced trademark lawyer to assist you with the registration process
If you have any questions regarding trademarks or any other legal matters related to your dental practice, please contact us directly at (778) 565-4700.