Co-branding: One product, two trademarks – who has the rights?

Posted in Blog, Expert Series
Mar 11, 2021
2.5 mins | 595 words
By: Christian Bolduc & Marie Christine Bernier

Co-branding is usually understood as the use of two or more trademarks on a single product, each mark belonging to a different owner and pointing to a different source. A common example of co-branding is a brand A car with brand B tires and a brand C sound system.  In this instance, there is likely a trademark for the finished product and other distinct marks for parts or components of the finished product. However, when two trademarks appear on one product (i.e. a manufacturer’s trademark and a retailer’s trademark) the situation becomes more complex.

In a manufacturer-retailer situation, only the manufacturer’s mark can act as a source identifier of the product. For instance, when a clothing retailer places its trademark on price tags or labels affixed to products manufactured by others and bearing their mark, the source of the clothing is the manufacturer, and its mark should be indicative of it.  In such circumstances, the retailer’s trademark cannot act as a source identifier of the clothing which only has one source, the manufacturer.  Perhaps such use of the retailer’s trademark instead is a form of promotion of the retail services it offers. Put another way, the manufacturer’s products do not become the retailer’s products simply because they were purchased at the retailer’s store and bear its mark.

It is not enough for a trademark to simply appear on a product to constitute use that generates trademark rights; the trademark must actually distinguish the products or services in association with which it is used by its owner from the products or services of other traders. In other words, the consumers must associate the trademark with a source of the products.

The only way the retailer’s mark put on a product manufactured by someone else could act as the source of the products would be if the manufacturer’s mark does not appear on the product, as is often time the case when retailers enter into an agreement with manufacturers to make products that exclusively bear the retailer’s mark (also known as the private label). Retailers only applying their mark to products already bearing the manufacturer’s mark do so at the risk of seeing their trademark application for that mark refused if it is successfully opposed by third parties, or their registration invalidated if their registration covers those products.

For further information regarding protecting trademark rights in Canada, please contact a member of our Trademarks & Brand Protection team.

The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.

About Invest Ottawa Sponsor, Smart & Biggar:

Smart & Biggar helps the world’s leading tech companies protect and leverage their IP, and advises them on how to use IP Strategy to secure growth around the world.

Headquartered in Ottawa with a national presence, Smart & Biggar has a consistent track record and reputation as the leader for IP and tech law in Canada.

About the Authors:

Christian Bolduc is a partner at Smart & Biggar. Christian Bolduc is a partner at Smart & Biggar. Combining more than twenty years of experience across all stages of the trademark life cycle with a keen business mindset, Christian is passionate about helping clients generate ROI and value from strategically-developed IP assets.

Marie Christine Bernier is an associate at Smart & BiggarMarie Christine Bernier is an associate at Smart & Biggar. Marie Christine works with companies of all sizes from local start-ups to multinational corporations and across all industries to develop strong trademark portfolios that are aligned to their business objectives and guard against competitors.

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