Clearly when it comes to filing consents to registrations and use in Canada, the opinion of the Trademarks Office prevails, notwithstanding that the parties involved might have a better handle on the realities of the marketplace and be able to judge the potential for likelihood of confusion between two marks. The Canadian Trademarks Office takes the view that it represents the public interest and therefore needs to be satisfied that if it accepts a consent, the conditions for registration are met. The Office Practice Manual states that the Registrar will not “normally give favourable consideration where the trademarks involved are identical and/or where the goods or services covered by the trademarks are overlapping”. If a Consent is filed, in addition to the statement that the owner of the cited mark consents to the registration of the applicant’s mark, the consent should also indicate as much of the following as possible:
a) that “the goods or services are sufficiently dissimilar so that they are not likely to travel through the same channels of trade” (i.e. that the operations of the respective trademark owners do not overlap). Particulars of the goods and/or services covered by the individual marks must be clear.
b) that “there would be no likelihood of confusion” as a result of the contemporaneous use of the marks in the marketplace.
c) that the parties “will do everything in their power to avoid the possibility of confusion in the marketplace”.
d) that “the two trademarks have co-existed over a period of time in the marketplace without any known instances of confusion”.
The reality is that Examiners will only give weight to a consent where the Examiner is sitting on the fence on the issue of registrability.
Once a consent is filed:
1) it is permanently on the record for the specific file and
2) is not revocable.
Once filed, can a consent be revoked? For the purpose of the examination phase, it cannot. If the party which provided consent no longer wishes to do so for a reason (for example, it was misled, its relationship with the applicant has broken down and so forth) – such entity will have to deal with this issue in Opposition or in the court.
In view of the foregoing, it is not surprising that in the context of two “ordinary” trademarks, consents are not frequent. This is contrast to the situation involving Section 9 citations where the consent given by a Section 9 holder is much simpler and is not reviewed/challenged by the Office so long as it does not contain improper restrictions such as a time limitation.