Clients will often contact us with regard to trademark questions before or soon after they begin using the trademark. This, of course, is a good thing.
Generally, we advise our clients to file their trademark applications as soon as possible. This may be done before the trademark has been used. Under the Trade-marks Act, applications may be filed on a “proposed use” basis. Alternatively, if the mark has already been used in association with the sale of wares or the performance of services, we would simply indicate the date of first use in the application.
Once a trademark application is filed, it ultimately is reviewed by trademark examiners. The examiner will generally search the trademark register to see if the applied for mark is confusing or likely to be confusing with any trademarks already registered or applied for in advance of the application under examination. The examiner will also review the description of the wares and services to ensure that they are in accordance with current trademarks office practice. If there is a problem, the examiner will issue a report, giving us the opportunity to address the issue.
Once the examiner is satisfied that the application meets all of the requirements of the Trade-marks Act, the application will be approved for publication. This means that details of the trademark application will be published in the Trademarks Journal for opposition purposes. Interested parties may, within two months of the date of publication, oppose a trademark application. In a statement of opposition, such other parties must explain why the application does not meet the requirement of the Trade-marks Act.
Generally, trademark oppositions are based on the likelihood of confusion between the applied for mark and a pre-existing trademark, registered or not, used by the opponent. Sometimes, however, statements of opposition attack other technical details of a trademark application. In some instances, there have been attacks on the distinctiveness of the mark applied for and the date of first use alleged in the statement of opposition.
In a recent decision of the Trademarks Opposition Board, the identity of the applicant was an issue. One of the grounds of opposition was that the application did not comply with Section 30 (e) of the Trade-marks Act. That section provides that an applicant for the registration of a trademark shall, in the application for a proposed trademark, include a statement that the applicant, by itself or through a licensee, intends to use the trademark in Canada.
In opposition proceedings, the onus is on the applicant to show that its application does not contravene the provisions of the Trade-marks Act as alleged by the opponent. The Trademarks Opposition Board has noted that named applicant must have an actual intention to use the applied for mark. In the case before the Trademarks Opposition Board, the evidence was that the applicant was applying for the mark on behalf of a company.
As the applicant did not have any intention to use the applied for mark and there was no evidence that applicant applied for the trademark with the intention to license it to the company, the Trademarks Opposition Board found the applicant did not have any intention to use the applied for mark in accordance with the statute:
I do not impute any fraudulent intent to the applicant, but the evidence is clear that the applicant was acting simply as a straw man for the business purposes of Encore Industries. I therefore find that the application does not comply with Section 30 (e) and the application is refused for that reason.
This case is a reminder to all that care must be taken to ensure that all the details in a trademark application must be carefully considered before filing. Business owners contemplating trademark protection must consider what legal entity will actually be using the mark and, if that entity is not itself the applicant, must consider license arrangements before an application is filed.
Note: This article is provided as information, is general in nature, and does not constitute legal advice.
About Steven Raber:
Steven is a partner of Fillmore Riley LLP and practises civil litigation, primarily commercial, employment, financial services, insurance, and intellectual property litigation, including patent, trademark, copyright, trade secrets, and industrial designs, and is a registered trademark agent.
Steven has further pursued his interest in alternative dispute resolution and has successfully served as mediator in intellectual property and other matters. After careful review of a large number of qualified applicants, the Selection Committee of the International Trademark Association has selected Steven to join its Panel of Neutrals as a mediator. This innovative Alternative Dispute Resolution (ADR) program has been very successful in resolving trademark and unfair competition disputes without litigation.
Steven is a Fellow of the Intellectual Property Institute of Canada, and is a member of the Advocates Society of Manitoba, the Canadian IT Law Association, and the Canadian and Manitoba Bar Associations.
Click here to find out more about Steven or to contact him.
About Fillmore Riley LLP:
Founded in Manitoba more than a century ago, Fillmore Riley LLP is a premier, full-service law firm. With a team of lawyers, paralegals and support staff more than 130 strong, Fillmore Riley brings a pragmatic, action-oriented approach to help clients solve any legal challenge in over 20 practice areas.
Fillmore Riley provides prompt, personal attention to its diverse clients, including owner-managed businesses, financial institutions, multinational corporations, government bodies, and professional associations. A recognized leader, Fillmore Riley was the first law firm in North America to obtain ISO 9001 Certification.
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