Entitlement — Confusing Marks

Publication Date: 2005-05-19

Effective Date: Date of publication in the Trademarks Journal - May 25, 2005

Note: This practice notice is intended to provide guidance on current Trademarks Office practice and interpretation of relevant legislation. However, in the event of any inconsistency between this notice and the applicable legislation, the legislation must be followed.

Paragraph 37(1)(c) of the Trade-marks Act stipulates that the Registrar shall refuse an application for the registration of a trademark if he is satisfied that the applicant is not the person entitled to registration of the trademark because it is confusing with another trademark for the registration of which an application is pending.

During the examination process, the Registrar will no longer consider the dates of first use or making known as a relevant consideration under paragraph 37(1)(c) of the Act Procureur Général du Canada v. Effigi Inc. (unreported, Neutral Citation: A-432-04)]. Therefore, when pending marks are confusing, the applicant with the earlier filing date or priority date, will be considered to be the person entitled to registration of the trademark.

Where the Trademarks Office considers that the provisions of paragraph 37(1)(c) apply, an applicant with a later filed application claiming an earlier date of first use or making known, who wishes to oppose the earlier filed application, will be able to request extensions of time pending the completion of the opposition process.

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