In many countries, during trademark prosecution, a letter of consent can be filed to overcome a citation of another mark. In Canada, while a letter of consent may be filed, and while it will be reviewed by the Trademarks Office, it is rare for the Canadian Trademarks Office to withdraw a citation following the filing of a letter of consent. This is because the Trademarks Office maintains discretion to determine whether two marks are confusing. In other words, if the Trademarks Office reviews a letter of consent and remains of the view that the marks are confusing, the citation will be maintained.
For the past year or so, and as reported in our article “Letters of consent in Canadian trademark Practice – A possible change on the horizon,” the Trademarks Office has indicated that it was considering changing its position. More specifically, the Trademarks Office informally indicated that it was considering changing its practice such that if a letter of consent were filed, the citation of a prior-filed application or registration would be withdrawn.
The Canadian Trademarks Office has just advised the profession that it is no longer considering a change in practice. Accordingly, while letters of consent can still be filed and will be reviewed, they will still not be binding on the Trademarks Office. The Trademarks Office will continue to have discretion to maintain citations despite the filing of any letters of consent.
For further information, please contact a member of our firm’s Trademarks group.
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.