Many brand owners mistakenly believe that obtaining a trademark registration is both the start and the end of what they need to do to protect their trademarks. This fallacy is exemplified by a recent US case in which San Diego Comic Convention (SDCC) sued the owners of the Salt Lake Comic Con convention for infringing their COMIC-CON trademark.

Ultimately, a jury found in favor of SDCC, but only awarded it $20,000 in damages, compared to the $6 million that SDCC had been seeking. SDCC had to spend far more than $20,000 on this lawsuit, and had to defend their trademark against a counterclaim that their COMIC-CON trademark was generic, merely being a short form for “comic convention”.

Now that the lawsuit is over, SDCC still faces challenges with regards to their trademarks. Many other comic conventions around the world are still, despite this lawsuit, using the trademark COMIC CON in connection with their own conventions, and on the same range of goods and services that are protected by SDCC’s trademarks.

In Canada, SDCC has several trademark registrations for COMIC-CON, however, there are several comic conventions around the country that use the COMIC CON trademark, including:

· Hamilton Comic Con

· Central Canada Comic Con

· London Comic Con

· Niagara Falls Comic Con

· Toronto Comic Con

This lawsuit will surely not be the last that SDCC will face alleging that the COMIC-CON trademark is generic and free to be used by anyone.

Trademark owners should be aware that a trademark registration is only the beginning of a trademark protection strategy. It is also important to monitor whether any other parties in the marketplace are using your trademark, and to take action if they are. Third party use of a trademark can be grounds to invalidate a trademark registration in Canada.