Trademarks Examination Manual — Page 3 of 5

On this page:

  1. Introduction
  2. Examination of the Application as to Form
  3. Search / Confusion
    1. Purpose of the Search
    2. Definition of Confusion — Subsection 6(2)
    3. Test of Confusion
    4. Searching
    5. Discovering a Confusing Mark
    6. Confusion with Co-pending Applications

III Search / Confusion

III.1 Purpose of the Search

In addition to being conversant with the Trade-marks Act and Regulations and ensuring that an application complies with their provisions, examiners also play a role in protecting the rights of other owners and their trademarks. This is done by examining the results of the search. The purpose of the search is to determine whether the mark applied for:

  1. is confusing with a trademark which is the subject of a pending application;
  2. is confusing with a trademark which is registered, pursuant to paragraph 12(1)(d);
  3. consists of, or so nearly resembles as to be likely to be mistaken for, a mark which is protected under section 9 (see also paragraph 12(1)(e));
  4. is a denomination the adoption of which is prohibited by section 10.1 (see also paragraph 12(1)(f)); or
  5. is in whole or in part a protected geographical indication and the application covers wines or spirits NOT originating in a territory indicated by the geographical indication, or agricultural products or foods belonging to the same category as the agricultural product or food identified by the geographical indication and NOT originating in a territory indicated by the geographical indication (see also paragraphs 12(1)(g), (h) and (h.1)).

If the trademark applied for is confusing with a trademark which is the subject of a pending application, examiners must determine who is entitled to registration and object to the application of the non-entitled person.

If the trademark applied for is confusing with a registered trademark, an objection will be raised pursuant to paragraph 12(1)(d) of the Trade-marks Act.

If the trademark applied for consists of, or so nearly resembles as to be likely to be mistaken for, a prohibited mark, an objection will be raised pursuant to paragraph 12(1)(e) of the Trade-marks Act.

If the trademark applied for consists of a plant variety denomination, or so nearly resembles a plant variety denomination as to be likely to be mistaken therefore, and the application covers the plant variety or another plant variety of the same species, an objection will be raised pursuant to paragraph 12(1)(f) of the Trade-marks Act.

If the trademark applied for is in whole or in part a protected geographical indication and the application covers wines or spirits not originating in a territory indicated by the geographical indication, or the application covers agricultural products or foods belonging to the same category as the agricultural product or food identified by the geographical indication and not originating in a territory indicated by the geographical indication, an objection will be raised pursuant to paragraph 12(1)(g), (h) or (h.1) of the Trade-marks Act, as applicable.

Note: The Registrar of Trade-marks keeps a list of protected geographical indications and, in the case of geographical indications identifying an agricultural product or food, translations of those indications, in accordance with subsection 11.12(1) of the Trade-marks Act.

The search is a key operation in the examination of a trademark application. Its importance cannot be minimized, nor can the fact that examiners are the first to consider possible confusion as to source. The search is a great responsibility and a careless or incomplete search might result in an invalid registration or cause considerable embarrassment and expense to the owner or to this Office. Keeping in mind that registration of a trademark gives to the owner exclusive right to use of that mark in Canada in respect of the goods or services in association with which it is registered, examiners should be consistent in the manner of consulting the search results and also make use of all pertinent reference sources.

III.2 Definition of Confusion — Subsection 6(2)

Section 6 of the Trade-marks Act, particularly subsection 6(2), describes the manner and circumstances in which one trademark would cause confusion with another. Subsection 6(2) states the following:

The use of a trademark causes confusion with another trademark if the use of both trademarks in the same area would be likely to lead to the inference that the goods or services associated with those trademarks are manufactured, sold, leased, hired or performed by the same person, whether or not the goods or services are of the same general class.

In deciding the question of confusion, Ritchie J. set forth the following criteria in Rowntree Co. Ltd. v. Paulin Chambers Co. Ltd. (1967), 54 C.P.R. 43 at page 47:

It is enough, in my view, if the words used in the registered and unregistered trade marks are likely to suggest the idea that the wares with which they are associated were produced or marketed by the same person.

In Benson & Hedges (Canada) Ltd. v. St-Regis Tobacco Corp. (1968), 57 C.P.R. 1 at page 4, Ritchie J., after reviewing subsection 6(2) stated:

I have italicized the words "would be likely to lead to the inference" as it appears to me to be clear that in opposing an application for registration, the holder of a trade mark which is already registered is not required to show that the "mark" which is the subject of the application is the same or nearly the same as the registered mark, it being enough if it be shown that the use of this mark would be likely to lead to the inference that the wares associated with it and those associated with the registered trade mark were produced by the same company.

III.2.1 Surrounding Circumstances — Subsection 6(5)

In determining the likelihood of confusion, examiners must consider all the surrounding circumstances, including the following as listed in subsection 6(5) of the Trade-marks Act:

  1. the inherent distinctiveness of the trademarks and the extent to which they have become known;
  2. the length of time the trademarks have been in use;
  3. the nature of the goods, services or business;
  4. the nature of the trade; and
  5. the degree of resemblance between the trademarks in appearance or sound or in the idea suggested by them.

In Haw Par Brothers International Ltd. v. Registrar of Trade Marks (1979), 48 C.P.R. (2d) 65, Marceau J. stated at page 70:

...[I]n order to determine whether trade marks are confusing within the meaning of the Act, that is, whether their concurrent use is likely to lead a purchaser to believe that the associated products come from the same source, the surrounding circumstances, particularly five major factors, must be taken into account.

In the Pianotist Case, reported in (1906) 23 R.P.C. 774, Parker J., after reviewing the surrounding circumstances which had been the subject of judicial consideration on many occasions, stated at page 777:

You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those wares. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.

In Ortho Pharmaceutical Corp. v. Mowatt & Moore Ltd. (1972), 6 C.P.R. (2d) 161, the Federal Court of Canada dismissed an appeal from an Opposition Board decision which held that DAYPAK for proposed use in association with "pharmaceutical dispensing packages" was not confusing with DIALPAK registered for "a tablet dispenser", Heald J. discussed the "surrounding circumstances" in the following from page 166:

Having given this matter my best consideration, I conclude that the two trade marks in question do not closely resemble one another in appearance or sound or in the ideas suggested by them. I have reached this conclusion after considering the subject marks on a first impression basis, and not by way of detailed comparison. In my view, the two marks do not appear similar nor do they sound similar. Finally, the ideas suggested by the two marks are totally different. Appellant's mark clearly suggests a dial package tablet dispenser from which you "dial your tablet" or pill. On the other hand, respondent's mark has no dial connotation but rather, relates to day or daily which is a deliberate course followed by the respondent to create in the minds of the trade, an association between its trade mark and the daily nature of the product.

Section 6(5) requires the Court, in determining whether the trade marks are confusing, to consider the particular matter listed in paras. (a), (b), (c), (d) and (e) thereof and also "all the surrounding circumstances".

An additional "surrounding circumstance" which, in my view I am entitled to consider, is the fact that both of the subject marks have in them an element common to the trade — that is — they both have in them the terminal letters "pak".

The rule is that where elements of a particular trade mark are common to the trade, they cannot be appropriated to the exclusive use of a particular trader because they cannot be said to have in them the vital element of distinctiveness. The evidence is that apart from appellant's mark DIALPAK, there are several hundred other trade marks registered for dispensers or packages in the Canadian Trade Marks Office containing the letters "pak, pac or pack" and many of them relate to pharmaceutical products. It seems to me that where, in a case like this, the two marks have a common suffix, this serves to make members of the trade more alert for a different prefix and thus minimizes the likelihood of confusion.

The surrounding circumstances are not exhaustive, nor are they to be given equal weight. See Bally Schufabriken A.G./Bally's Shoe Factory Limited v. Big Blue Jeans Limited Ltd./Ltée (1992), 41 C.P.R. (3d) 205 at 210 (F.C.T.D.).

III.2.1.1 Paragraph 6(5)(a) — Inherent Distinctiveness

A trademark which is created, unique, and non-descriptive is deemed to be inherently distinctive. If an inherently distinctive mark is the subject of a pending application, it would be considered to be a strong candidate for registration. If such a mark is already registered, it is the examiners' responsibility to protect those rights which accrue as a result of its inherent distinctiveness.

For example, it is clear that a mark such as KODAK, which is a purely arbitrary word, possesses more inherent distinctiveness than a mark such as CORTI-VET which may be used in association with a veterinary preparation containing cortisone. In other words, the quality of "inherent distinctiveness" is easily attributed to the mark KODAK because, unlike CORTI-VET, KODAK has no suggestive or descriptive properties, nor does it suggest any other relation to the goods photographic film or photographic equipment. When it comes to actually comparing two word marks, examiners are directed to the following from H.G. Fox, Fox on Canadian Law of Trade-marks and Unfair Competition, Fourth Edition, Chapter 8:

If the words are distinctive, in the sense of being invented words, small differences will not be sufficient to distinguish them, whereas if the words are common or descriptive in meaning, they must be taken with their disadvantages. No person is entitled to fence in the common of the English language and words of a general nature cannot be appropriated over a wide area.

The ambit of protection that should be afforded to a common word was discussed in the decision of General Motors Corp. v. Bellows. At the trial level, (1947), 7 C.P.R. 1 at page 8, Cameron J. made the following comments:

In considering whether marks are similar, consideration ought to be given to the nature of the words themselves, and a distinction drawn between a fancy or invented word and an ordinary word in everyday use. In the case of a purely invented word, the scope is very much wider than that of an ordinary word.

On appeal to the Supreme Court of Canada, (1949), 10 C.P.R. 101 at page 115, Rand J. stated the following:

Mr. Fox submitted this basic consideration: that where a party has reached inside the common trade vocabulary for a word mark and seeks to prevent competitors from doing the same thing, the range of protection to be given him should be more limited than in the case of an invented or unique or non-descriptive word; and he has strong judicial support for that proposition: Office Cleaning Services Ltd v. Westminster Window & Gen'l Cleaners Ltd. (1944), 61 R.P.C. 133 at page 135; (1946), 63 R.P.C. 39; Br. Vacuum Cleaner Co. v. New Vacuum Cleaner Co., [1907] 2 Ch. 312 at page 321; Aerators Ltd. v. Tollitt, [1902] 2 Ch. 319.

III.2.1.2 Paragraph 6(5)(b) — Length of Time Used

Generally speaking, examiners are limited in their ability to make judgments about confusion based on the length of time the trademarks have been in use. Evidence of actual instances of confusion will be unavailable to them. However, such evidence will be considered during opposition proceedings as well as proceedings of the Federal Court of Canada. In judgments of this nature, it is generally accepted that a mark which has seen substantial use over a long period of time has also been known to a considerable extent and therefore deserves more protection than a mark which has seen less use over a short period of time and therefore has been known to a lesser extent.

Where both marks have been used for a long time in the same area without evidence of confusion, it is arguable that confusion would be unlikely to occur in the future, thus allowing for the registration of both marks. However, in Mr. Submarine Ltd. v. Amandista Investments Ltd. (1987), 19 C.P.R. (3d) 3, the Court found that the defendant's marks MR. SUBS'N PIZZA and MR. 29 MIN. SUBS'N PIZZA were confusing with the mark MR. SUBMARINE although there was no evidence of actual confusion despite ten years of concurrent use in the same area.

III.2.1.3 Paragraph 6(5)(c) — Nature of Goods or Services

When making a decision concerning the issue of confusion, examiners must not only focus on the inherent distinctiveness of the marks, but also on the nature of the goods or services to be associated with them. Therefore, examiners must clearly understand the description of goods or services as it appears on the application form, as well as the classification of those goods or services.

Examiners must also consider whether the goods or services covered by the application and the confusing mark are of the everyday sort, bought casually, or if they are expensive, thereby calling for a high degree of selection on the part of the purchaser See General Motors Corp. v. Bellows (1949), 10 C.P.R. 101 at 116-117. If the former case applies, examiners must be assured that the applicant's mark is sufficiently different from the cited mark that consumers will not confuse them in the course of routine and often hasty shopping. If the latter applies, examiners can allow for more subtle or complex differences between marks, since the purchaser will be taking more time to choose the item and therefore the mark associated with it.

Pharmaceuticals

When assessing confusion between trademarks used in the pharmaceutical industry, examiners must exercise special care to avoid confusion in view of the serious consequences which may arise through mistakes or negligence.

In Mead Johnson & Co. v. G.D. Searle & Co. (1967), 53 C.P.R. 1, Justice Dumoulin stressed the importance of avoiding confusion with respect to the selling and dispensing of pharmaceutical products even in those instances where the products in question are sold only by means of prescription and are only dispensed by pharmacists from written instructions from a physician.

Further, it is important to note that in the decision of the Supreme Court of Canada in Ciba-Geigy Canada Ltd. v. Apotex Inc. (1992), 44 C.P.R. (3d) 289 it was determined that in the field of prescription drugs, the customer includes physicians, pharmacists, dentists and patients.

III.2.1.4 Paragraph 6(5)(d) — Nature of the Trade

In assessing the nature of the trade, a relevant consideration would be to determine if the goods are sold directly by the manufacturer through wholesalers, retailers or catalogues, or by telephone. If the goods are ordered by telephone, the sound of the trademark becomes even more important than when consumers can see the mark affixed to the goods. Wholesalers may not be confused since they deal directly with manufacturers, but consumers do not have specialized knowledge of the trade and therefore could be confused.

If examiners are initially uncertain as to whether the channels of trade are the same for the marks, they should cite the confusing mark in an official report and require the applicant to argue the merits of the citation. If the applicant convincingly argues that the channels of trade are different, examiners will consider this in deciding whether or not to withdraw the objection.

However, examiners should not necessarily take into account a submission that since the goods are not sold in the same places the channels of trade are different and therefore the marks are not confusing. In Eminence S.A. v. Registrar of Trade Marks (1977), 39 C.P.R. (2d) 40 at page 43, Dubé J. stated:

Even if Fabergé does not sell its products in the same places as appellant, it is legally entitled to do so. It matters little that at the present time Fabergé's wares are sold in hairdressing salons rather than in drug stores.

III.2.1.5 Paragraph 6(5)(e) — Degree of Resemblance between the Marks

When dealing with the issue of confusion between marks, examiners must consider the degree of resemblance in the appearance, sound or ideas suggested by the marks. If the mark applied for appears in the same script as the mark on the Register, this factor must be taken into consideration. If two marks are comprised of a similar arrangement of word and design, or if two marks suggest the same common idea, confusion may occur.

As well, examiners will have to carefully consider two marks that sound alike, even though they appear dissimilar in written form. For example, a consumer might confuse the mark PHARSYDE with the mark FARSIDE, even though the marks look different.

Marks may also be found to be confusing if they suggest the same idea even though they do not necessarily sound alike or look alike. For example, a consumer might confuse the mark GRILLMASTER with the mark BROILMASTER.

Examiners must consider the likelihood of confusion between trademarks in either or both of Canada's official languages. In Scott Paper Co. v. Beghin-Say S.A. (1985), 5 C.P.R. (3d) 225, Strayer J. stated at page 231:

I have no doubt that the Registrar of Trade Marks and the court should be alert to the possibility of confusion between trade marks in either or both of Canada's official languages. This is not only required by the constitutional and legal status of both languages at the federal level, but is also a reflection of the fact that there are several million bilingual Canadians who may associate words in one official language with their equivalent in the other.

In Rose v. Fraternité Interprovinciale Des Ouvriers en Electricité (1977), 32 C.P.R. (2d) 42, Walsh J. found a design mark having the words FRATERNITé INTERPROVINCIALE DES OUVRIERS EN ELECTRICITé to be confusing with an earlier registration of a design mark having the words INTERNATIONAL BROTHERHOOD OF ELECTRICAL WORKERS. See also Johnson & Johnson Ltd. v. Philippe-Charles Ltd. (1974), 18 C.P.R. (2d) 40, referred to therein.

When assessing confusion between trademarks, the first word or first syllable in a trademark is more important for the purpose of distinction than those that follow. In Conde Nast Publications Inc. v. Union des Editions Modernes (1979), 46 C.P.R. (2d) 183, Cattanach J. stated at page 188:

It [respondent] has appropriated the appellant's mark in its entirety and added thereto as a suffix the words "age tendre". It is axiomatic that the first word or the first syllable in a trade mark is far the more important for the purpose of distinction. Here the first and most important word in the mark which the respondent seeks to register is identical to the mark registered by the appellant.

III.3 Test of Confusion

The test of confusion is one of first impression. Consumers may be aware of one trademark, but imperfect recollection may cause them to mistake that mark for another. Examiners must put themselves in the position of consumers and ask whether a person with imperfect recollection would be likely to infer that the goods or services associated with the applicant's trademark and those associated with another trademark are manufactured, sold, leased or hired by the same person.

After reviewing a number of cases relating to the determination of confusion in British Drug Houses Ltd. v. Battle Pharmaceuticals (1944), 4 C.P.R. 48, President Thorson made the following summation at pages 57-58:

In determining whether the registration of a trademark should be expunged on the ground of its similarity to a mark already registered for use in connection with similar wares it is not a correct approach to solution of the problem to lay the two marks side by side and make a careful comparison of them with a view to observing the differences between them. They should not be subjected to careful analysis; the Court should rather seek to put itself in the position of a person who has only a general and not a precise recollection of the earlier mark and then sees the later mark by itself; if such a person would be likely to think that the goods on which the later mark appears are put out by the same people as the goods sold under the mark of which he has only such a recollection, the Court may properly conclude that the marks are similar. The reasons for this guiding rule are sound. Similar marks are not identical marks and similarity of marks implies some difference between them, for without any difference they would be identical. A careful analysis of the marks with a view to ascertaining differences fails to observe this important distinction. Moreover, it is the likely effect of the use of the later mark on the minds of ordinary dealers or users generally that must be considered and people as a rule have only a general recollection of a particular thing, rather than a precise memory of it.

In Canadian Schenley Distilleries Ltd. v. Canada's Manitoba Distillery Ltd. (1975), 25 C.P.R. (2d) 1, Cattanach J. stated at page 5:

To determine whether two trade marks are confusing one with the other it is the persons who are likely to buy the wares who are to be considered, that is those persons who normally comprise the market, the ultimate consumer. That does not mean a rash, careless or unobservant purchaser on the one hand, nor on the other does it mean a person of higher education, one possessed of expert qualifications. It is the probability of the average person endowed with average intelligence acting with ordinary caution being deceived that is the criterion and to measure that probability of confusion the Registrar of Trade Marks or the Judge must assess the normal attitudes and reactions of such persons.

In considering the similarity of trade marks it has been held repeatedly that it is not the proper approach to set the marks side by side, and to critically analyze them for points of similarities and differences, but rather to determine the matter in a general way as a question of first impression.

In this case, the mark TSAREVITCH, for alcoholic beverages, was found to be confusing with the mark TOVARICH for the same goods.

Where the mark or marks being considered are composite marks, it is the totality of the marks which must be considered. In the British Drug Houses case, President Thorson said, at page 60:

It is the combination of the elements that constitutes the trade mark and gives distinctiveness to it, and it is the effect of the trade mark as a whole, rather than of any particular element in it, that must be considered.

In determining confusion, examiners should take into account only the mark applied for by the applicant and only the trademark as registered. The fact that the mark applied for is used in association with a corporate name or logo is of no significance because that is not the mark for which the exclusive right is sought. Commenting on this in British Drug Houses Ltd. v. Battle Pharmaceuticals (1944), 4 C.P.R. 48, President Thorson stated at page 55:

... the Court must not allow its consideration of the main issue, namely, whether there is a likelihood of confusion in the minds of dealers or users as a result of the use of the mark in dispute, to be deflected by taking irrelevant matters into account. The respondent filed samples of the bottles in which the respective preparations of the parties are sold. These differ somewhat in shape and there are differences in the labels. The Court is not concerned with the bottles in which the preparations are sold or the labels on them but with the trade marks under which they are put out. It is the effect of the trade marks, and not of the bottles or labels, that must be considered. If the use of the marks on the wares is likely to result in confusion as to the wares, differences in the bottles or labels might serve to lessen the confusion but do not eliminate it. Differences in the bottles or labels cannot turn similar trade marks into dissimilar ones. Such differences have nothing to do with the issue before the Court, for there is no reason why either party should continue the use of the present bottles or labels and nothing to prevent either of them from changing the present shape of the bottles or form of labels. Neither the bottle nor the label is part of the trade mark. The protection given by the registration extends to any normal use of the trade mark and is not confined to any particular use of it such as its use with a particular shape of bottle or on a particular form of label.

III.3.1 Doubt as to Confusion

Where examiners are in doubt as to whether the applicant's mark is likely to cause confusion with another mark, they shall cause the application to be advertised in the manner prescribed. If the other mark is registered, pursuant to subsection 37(3) of the Trade-marks Act, the owner of the registered trademark shall be notified, by registered letter, of the advertisement of the application.

III.4 Searching

A complete search must include a search of pending, registered, abandoned and refused marks under the Trade Marks and Design Act, the Unfair Competition Act, the Trade-marks Act and the Newfoundland Register. A search of the refused and abandoned marks is made to be aware of past decisions or research which has been compiled and which might apply to the case at hand.

The names of applicants and registrants are useful to examiners, particularly in cases where the applicant is the owner of previously registered trademarks which would otherwise be found confusing. See also section 15 of the Trade-marks Act.

The list of geographical indications is also searched and section 11.18 of the Trade-marks Act should also be consulted when the application covers such goods.

Subject matter protected pursuant to Article 6ter of the Paris Convention should be consulted when searching marks comprising flags, coats of arms, emblems and the like. See paragraph 9(1)(i) of the Trade-marks Act. The reasons for this are discussed in section IV.11 of this Manual.

III.5 Discovering a Confusing Mark

III.5.1 Confusion with a Registered Mark — Paragraph 12(1)(d)

If the trademark applied for is confusing with a registered trademark, examiners must raise an objection pursuant to paragraph 12(1)(d) of the Trade-marks Act. Subsection 37(2) of the Trade-marks Act dictates that the applicant must be notified of the reasons for the objection and be given an opportunity to respond and the applicant's response will be evaluated. If the examiner still finds that the mark applied for is confusing with the registered mark, the application may be refused pursuant to subsection 37(1) of the Trade-marks Act.

The applicant may attempt to overcome a citation of confusion with a registered trademark by either applying to the Federal Court to have the mark struck from the register pursuant to section 57, or by requesting that a notice be sent pursuant to sections 44 or 45 of the Trade-marks Act.

III.5.2 Associated Marks — Section 15

This section of the Trade-marks Act provides that "confusing trade-marks are registrable if the applicant is the owner of all such trade-marks, which shall be known as associated trade-marks." If the applicant is the owner of other marks which are confusing with the applied for trademark, examiners will not raise an objection that the marks are confusing but will associate all of the marks.

Minor variations in the manner in which the owner's name is set out may not necessarily indicate a difference in ownership of the marks. Where it is clear that the identity of the owner of the confusing marks has not changed, the examiner will associate all of the marks. For example, a trademark owned by ABC Co. Ltd. will be associated with confusing marks owned by ABC Co. Ltd. doing business as XYZ Ventures and will also be associated with confusing marks owned by ABC Co. Ltd. trading as JKL Enterprises.

In cases where a partial assignment has been recorded, the statement of association should specify the goods or services in respect of which the marks are associated. For example, the mark HABITANT has partial owners and would be associated in the following manner: associated mark TMDA 46783 in respect of the goods marked (2).

The Trademarks Office may correct any error, in accordance with Rule 33, by removing the association between marks which, through clerical error, should not have been associated initially.

III.5.3 Confusion with Certification Mark

Section 24 of the Trade-marks Act provides for the registration of a mark that is confusing with a registered certification mark by a licensee of the certification mark. This can occur only if the owner of the registered certification mark consents and if the marks exhibit an "appropriate difference." The mark must be used by the licensee "to indicate that the goods or services in association with which it is used have been manufactured, sold, leased, hired or performed by him as one of the persons entitled to use the certification mark." The Registrar must, however, expunge the registration should the owner withdraw consent, or upon cancellation of the registration of the certification mark. See also subsections 23(2) and (3) of the Trade-marks Act.

III.5.4 Confusion with Newfoundland Registrations

Sections 67 and 68 of the Trade-marks Act provide for the protection of trademarks registered under the Laws of Newfoundland before Newfoundland became part of Canada. Newfoundland registrations are not considered registered trademarks on the register required to be maintained by the Trade-marks Act. As such, examiners will not raise a 12(1)(d) objection for trademarks deemed to be confusing with Newfoundland registrations. Instead, the examiner will draw the applicant's attention to the Newfoundland registration, pursuant to subsection 67(1) of the Trade-marks Act and inform them that they may request a restricted registration whereby Newfoundland is excluded.

Where an application for a trademark is confusing with a Newfoundland registration in respect of only some of the applicant’s goods or services, the applicant may request a restricted registration excluding Newfoundland with respect to the goods or services in association with which use of the applicant’s trademark would be likely to cause confusion with the Newfoundland registration, subject to the provisions of subsection 67(1) of the Trade-marks Act.

Since trademarks registered pursuant the laws of Newfoundland prior to April 1, 1949 do not form part of the register, the types of amendments permitted under the Trade-marks Act do not apply.

However, since the laws of Newfoundland permitted the owner of a trademark to cancel its entry on the register, the Office will cancel a trademark registered pursuant to the laws of Newfoundland prior to April 1, 1949 upon submission of such a request from the owner of the Newfoundland registration.

Additionally, since the laws of Newfoundland permitted the ownership of a trademark to be transferred, the Office will record a transfer of ownership of a Newfoundland trademark upon submission of acceptable documentation which would allow the Office to record the change in ownership, as well as the fee of $1 that was required under the laws of Newfoundland.

Where there has not been a transfer of ownership but the name of the owner of the Newfoundland registration has changed over the years, the Office will record the change in name of the owner of the Newfoundland registration upon submission of acceptable documentation that illustrates the successive changes in name from the owner of the Newfoundland registration as shown on the database to the present name of the owner. If the owner is unable to supply the documentation showing the successive name changes, the Office would accept an affidavit or statutory declaration stating the current name of the owner who registered the trademark under the laws of Newfoundland.

III.6 Confusion with Co-pending Applications

If the mark applied for is confusing with a mark which is the subject of a pending application, the examiner must determine who is entitled to registration and object to the application of the non-entitled person.

III.6.1 Persons Entitled to Registration

(See also the practice notice entitled Entitlement — Confusing Marks)

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.

In Attorney General of Canada v. Effigi Inc.(2005), 41 C.P.R. (4th) 1, the Federal Court of Appeal determined that during the examination process, the Registrar shall not consider dates of first use or making known as a relevant consideration under paragraph 37(1)(c) of the Trade-marks Act. 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.

III.6.2 Notification of Applicants

(See also the practice notice entitled Discontinuance of courtesy letters for co-pending confusing trademarks)

When confusion is apparent between pending trademarks and no other objections or requirements exist, examiners will immediately accept for advertisement the application of the entitled person. At the same time, examiners will notify the non-entitled person of the objection and give the reason for non-entitlement, namely, the earlier date of filing or priority filing of the other application.

Where the non-entitled person's application encounters a co-pending confusing application which has been advertised in the Trademarks Journal, the non-entitled person will be notified of the objection citing the confusing trademark and be informed of the publication date.

Where the non-entitled person's application encounters a co-pending confusing application which is the subject of opposition proceedings, it will not be held in abeyance pending the opposition outcome, and will receive an examiner's report citing the confusing trademark and a period of time in which to reply. See Anheuser-Busch, Inc. v. Carling O'Keefe Breweries of Canada Ltd. (1982), 69 C.P.R. (2d) 136. If the non-entitled person wishes to oppose the earlier filed application, requests for extensions of time may be granted pending the completion of the opposition process.

The Registrar will not issue correspondence to applicants informing them of co-pending and confusing applications with a later filing date or priority filing date.

Note: An entitled application encountering a co-pending confusing application which is scheduled for advertisement but not yet officially published in the Trademarks Journal will be accepted for advertisement, as long as no other objections or requirements exist, notwithstanding that it may be too late to prevent the publication of the non-entitled mark. The deadline for the withdrawal of the approval notice in such a case is the actual date of publication. Examiners will issue a report advising the non-entitled party that a subsequent application has an earlier date of filing or priority filing and will withdraw the approval notice. If the co-pending confusing application is discovered after the publication date, then the process becomes irreversible since the finality of examination is the advertisement. See Beaver Knitwear Ltd. v. Registrar of Trade Marks (1986), 11 C.P.R. (3d) 257.

III.6.3 Same Entitlement Date

In cases where two applications have the same entitlement date, i.e., the same date of filing or priority filing, for similar or identical goods or services, both applications will be approved for publication. This is because it cannot be said that one applicant is entitled to registration over the other.

III.6.4 Abandoned Applications

Pursuant to paragraph 37(1)(c), an abandoned application cannot be cited against a pending application.


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