During the examination of a trademark application, the Trademarks Office will conduct a search of their database for confusing marks that are already registered or were previously filed. Confusing marks will be cited against the application and if the applicant is not successful in overcoming the citation(s), the application will be refused.
In the case where the applicant presents arguments that do not fully convince the Examiner that there would be no confusion caused by concurrent use of the applicant's mark and the cited mark, the Examiner may still approve the application for publication in the Trademarks Journal. However, pursuant to section 37(3) of the Trademarks Act (the "Act"), the Trademarks Office will send a notice to the owner of the cited mark to advise them that the application will be published for opposition purposes. Essentially, the Trademarks Office will be leaving it up to the owner of the cited mark to oppose the application. As such, it is important for trademark owners to keep their addresses up to date with the Trademarks Office to ensure that section 37(3) notices, and other important notices, are sent to the correct address.
In some cases, the confusing mark may belong to the owner of the application that is being examined. Section 15 of the Act provides that confusing marks may be registered if they belong to the same owner. In these circumstances, the Examiner will approve the application, but will associate the application with the confusing mark. By associating the marks, ownership of one mark cannot be amended unless ownership of all of the associated marks is likewise amended. The obvious disadvantage of having marks associated is that the owner cannot sell one mark to another entity without selling all of the marks. Any association should be carefully reviewed as in some cases the association is unjustified. If the applicant believes that the marks should not be considered to be confusing, an argument can be filed to have the association removed. A question that often arises is what happens when the cited mark is owned by a closely related company, or even a parent company or wholly owned subsidiary. Unfortunately, section 15 requires that the associated marks be owned by the same legal entity. Accordingly, all of the associated marks would have to be assigned to one of the legal entities for the application to be approved.
Timothy P. Lo, Vancouver
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.