What to do if a corporate name can be confused with another name or trademark
Corporations Canada can require a federally-incorporated corporation to change its name if it determines that the name is likely to be confused with the name of another business, organization or with a trademark.
If you are concerned that the name of an existing federal corporation (the Corporation) can be confused with a name or a trademark you own, you can ask that a process called an “Allegation of Corporate Name Confusion” be started against that Corporation. As part of this process, the corporate name and the information that has been provided to us will be reviewed to determine whether the name of the Corporation is likely to cause confusion with your name or trademark.
This document aims to clearly explain the process to avoid the administrative difficulties of an Allegation of Corporate Name Confusion proceeding. It also reflects Corporations Canada’s understanding of the role it plays in these cases.
Stage 1 – Answer the following questions before deciding to start an Allegation of Corporate Name confusion proceeding
Question 1: Was the corporation whose name you want reviewed (the Corporation) created by Corporations Canada?
Corporations Canada can only review the name if the Corporation was created under one of the following laws:
- Canada Business Corporations Act
- Canada Not-for-profit Corporations Act
- Canada Cooperatives Act
- Canada Corporations Act.
You can find this information using the Corporations Canada online database.
If the Corporation was created under another federal law (e.g., Bank Act, Trust and Loans Act), you will have to contact the department responsible for that law (e.g., Office of the Superintendent of Financial Institutions Canada).
If the Corporation was created by a provincial, territorial or foreign authority, you will have to contact that authority to see what can be done.
Question 2: Is confusion likely?
When a corporation is created, its corporate name should not cause confusion with any existing business name or trademark used in Canada. For example, a name should not lead a person to think that two unrelated corporations are the same business.
Confusion depends on the circumstances. It depends on the degree of resemblance between the two names in appearance or sound, and on the nature of the goods or services associated with the names. For example, Pear Computers Inc. is not likely to be confused with Pear Orchards Pick-Your-Own Pears Ltd. A greater likelihood of confusion would exist if the two corporations dealt in the same goods or services. It also depends, among other things, on whether they are operating in the same geographic area or serving the same clients. Other factors that should be considered when deciding whether confusion is likely or not are: the uniqueness of a name; how well known or “famous” the name is; and the length of time a name has been in use.
If you think there is a strong likelihood of confusion or if you have proof of actual instances of confusion between the name of the Corporation and that of your corporation or your trademark, review the steps in Stage 2.
Before starting an allegation of confusion process, you may want to discuss your concerns with the other Corporation to see if it is possible for both of you to co-exist with your respective names and continue to comply with the name regulations. This should be documented. If the concerns cannot be resolved between you, then consider starting an Allegation of Corporate Name Confusion process.
Stage 2 – The four steps of an Allegation of Corporate Name Confusion process
Step 1: Submit a request (called a Statement of Objection)
The Statement of Objection, which is sent to Corporations Canada, should explain why you think the name of the Corporation is confusing or is likely to cause confusion with your name or trademark. It needs to include the following information:
- a clear request for the corporate name of the Corporation to be changed
- the name and contact information of the Objector (this is you)
- the identity – name and corporation number – of the Corporation (you can find this information in the Corporations Canada online database)
- evidence that you as the Objector are relying upon, among other things
- the similarities between the name of the Corporation and your name or trademark, such as the degree of resemblance between the corporate names in appearance or sound
- specifics relating to your name or trademark, including
- when the name or trademark was first used
- how often the name or trademark is used
- how well known it is to clients, and
- how it is used
- the type of goods or services associated with your name or trademark and how the goods or services are distributed
- the territory in which your corporation operates
- the type of client your corporation deals with
- detailed descriptions of any actual instances of confusion
- any efforts you have made to bring your concerns to the attention of the Corporation (e.g., copies of any correspondence between the parties that is not protected by solicitor-client privilegeFootnote 1)
- if both names have been used for a long period of time (e.g., more than 2 years), the reason a review of the name was not requested earlier
- any relevant expert evidence of that you intend to rely upon (e.g., any survey evidence)
- information about any court actions or other types of proceedings regarding this issue.
There is no fee for filing an Allegation of Corporate Name Confusion.
Corporations Canada will notify you of the dismissal of the allegation of confusion and the termination of the proceeding if Corporations Canada is of the view that
- the degree of resemblance between the names or between the name and the trademark is not sufficient to warrant further proceedings, or
- the Statement of Objection does not raise a substantial issue for decision.
Such a dismissal decision can be appealed under the applicable law.
Step 2: The Corporation is given the opportunity to respond (called a Response)
Once we have received your Statement of Objection, we will contact representatives of the Corporation and provide them with a copy. They will then have 30 days to submit the same information (as explained in Step 1) about their corporation – called a Response. They will also be asked to explain their position as to whether or not there is a likelihood of confusion. The Response would include any additional facts, documents and other evidence that should be brought to the attention of Corporations Canada.
If they do not respond, Corporations Canada may make a decision based on the information available.
Step 3: The Objector is given an opportunity to reply to the Corporation’s Response (called a Reply)
The Corporation’s Response will be forwarded to you. In turn, you will have 30 days to provide additional arguments and evidence to reply to the Response. This is called the Reply and it is to be strictly limited to the issues and new evidence that were raised in the Response. A copy of the Reply will be sent to the Corporation, who will not have an opportunity to respond to it.
If you do not submit a Reply, Corporations Canada may make a decision based on the information available or may decide that the case has been abandoned in situations where we do not have enough information to make a decision.
Step 4: Corporations Canada makes a decision
Corporations Canada will review the information received in Steps 1 to 3 and make a decision based on the corporate name rules.
Corporations Canada may decide that
- a name change is not necessary, or
- the corporate name of the federal Corporation must be changed. Note that if the Objector is also a federal corporation created by Corporations Canada, we may decide that the Objector’s corporate name must change its name due to confusion.
Once a decision has been made, it will be sent to both the corporations together with reasons for that decision.
- Corporations Canada does not conduct oral hearings. Only written submissions will be accepted.
- At any point in the process, Corporations Canada may request more information from either party if what is provided is not sufficient to make a decision.
- In some cases, Corporations Canada may require portions of the information described in Steps 1 to 3 to be submitted in the form of a statutory declaration.
- If submitted by paper (i.e., mail, courier), Corporations Canada requests that two copies of any submissions be provided.
- Corporations Canada may allow a time extension, such as 30 additional days to respond to a Statement of Objection or Response. A written request must be made to Corporations Canada explaining the reasons of the need for an extension.
Appealing Corporations Canada’s decision
Corporations Canada’s decision, either dismissal at Step 1 or final decision at Step 4, may be appealed to a court under section 246 of the Canada Business Corporations Act, section 258 of the Canada Not-for-profit Corporations Act or section 345 of the Canada Cooperatives Act.
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