Written By: Gabriella Fortugno (IP Lawyer)
Upcycling is a creative and sustainable way to transform old items or waste into new, useful products. Upcycling may or may not keep the original items intact and repurposes them creatively. This process helps reduce waste, conserve resources, and often results in unique, one-of-a-kind products. However, when upcycling involves branded items or logos, it can raise legal concerns about trademark rights. Understanding these legal issues is important for both upcyclers and brand owners.
Trademark Infringement, the Doctrine of Exhaustion, and Upcycling
Trademark infringement happens when a brand’s trademark is used without permission in a way that confuses consumers, weakens the brand, or falsely suggests a connection to the brand. For example, using a logo on an upcycled product could imply endorsement or partnership with the brand. This false connection confuses consumers in the marketplace and is trademark infringement.
Second-hand sales of branded items are generally exempt from infringement claims due to the doctrine of exhaustion. This means that once a product is sold, the buyer can use or resell the product as long as it remains unaltered. However, significant changes or modifications to the product might remove this protection.
If an upcycled product still displays the original trademark, consumers may mistakenly believe the product is endorsed by or originates from the original brand and therefore constitutes trademark infringement.
Best Practices for Upcyclers
To reduce the risk of trademark infringement claims, upcyclers should:
- Be Transparent: Use disclaimers on packaging, websites, and social media platforms to clearly communicate that upcycled products are not affiliated with or endorsed by the original brand.
- Avoid Consumer Confusion: Avoid using trademarks in a way that misleads consumers. This may involve removing the original trademark or avoiding branding that could imply endorsement.
- Consider Licensing Agreements: If the upcycled product incorporates a trademark, obtaining a license from the trademark owner can reduce legal risks.
Considerations for Brand Owners
Brand owners should monitor the market for unauthorized use of their trademarks in upcycled products and assess whether such use constitutes trademark infringement.
If you have any questions about upcycled products and registering or licensing your trademarks, brands, logos, or slogans in Canada, contact one of our experts today!
