One of the most common bases for an initial refusal of an application to register a trade-mark in Canada is that the applied for mark is confusing with a registration or pending application for a similar mark used in association with similar wares and/or services. In such cases, the applicant might sometimes file a letter of consent, indicating that the owner of the cited mark consents to the use and registration of the applicant’s mark. Currently, such letters of consent rarely convince the Examiner to withdraw the objection. However, that situation might soon change.
Current Law. Under current Canadian law, if two marks are confusing (and are used in association with the same general class of wares and/or services) the marks will not be allowed to co-exist on the register unless they are owned by the same legal entity. Typically, it does not matter if the owner of the earlier mark has given consent to the registration of the later mark or if those two legal entities are related companies – if the marks are owned by different entities then the Canadian Trade-marks Office will refuse registration of the later mark and a consent is generally given limited weight.
The justification for the Trade-marks Office’s position is that it views one of its roles to be the protection of the public. Despite the fact that the owners of the marks may agree to the marks’ co-existence, there remains a risk that ordinary consumers may still be confused and misled as to the origin of goods or services if those goods or services are branded with similar trade-marks. See, for example, Haw Par Brothers International Ltd v Canada (Registrar of Trade Marks) (1979), 48 CPR (2d) 45 (FC), in which the Canadian Federal Court declined to find a consent agreement between the parties persuasive, holding:
It is equally clear that the agreement between the owners of the mark TIGER'S MILK and appellant, and even the statement by the directors of Plus Products that their mark and the one proposed are not confusing, could not have any significant influence; the Registrar represents the public interest first, and he must satisfy himself that the conditions for registration have been met.
Proposed Change. The Canadian position is often times frustrating to brand owners from outside Canada. This is especially so as Canada does not utilize the international classification system, and marks may be considered to be confusing even when they relate to goods and/or services in different classes.
Recently, however, the Canadian Trade-marks Office has informally indicated that it is considering changing its practice with respect to letters of consent. Specifically, the Trade-marks Office has mentioned the possibility that the practice at the Trade-marks Office might change such that if it receives a letter of consent, it will allow the registration of a confusing mark in the name of another entity without further objection or argument.
Contents of letters of consent. At present, the Trade-marks Examination Manual states that in addition to providing a statement of consent, a letter of consent should ideally include the following facts and statements where applicable:
- The wares or services are sufficiently dissimilar so that they are not likely to travel through the same channels of trade in the marketplace.
- There would be no likelihood of confusion in the public mind as a result of the contemporaneous use of the trade-marks in the marketplace.
- The parties will do everything in their power to avoid the possibility of confusion in the marketplace.
- The two trade-marks have co-existed over a period of time in the marketplace without any known instances of confusion.
Whether a change in practice with respect to letters of consent will be accompanied by a new practice directive regarding the content of such letters is not yet known.
Conclusion. While a change in practice regarding letters of consent in Canada is a possibility, such letters are not presently determinative of the issue of whether two marks are confusing.