In many countries, during trade-mark prosecution, a letter of consent can be filed to overcome a citation of another mark. In Canada, while a letter of consent may be filed, and while it will be reviewed by the Trade-marks Office, it is rare for the Canadian Trade-marks Office to withdraw a citation following the filing of a letter of consent. This is because the Trade-marks Office maintains discretion to determine whether two marks are confusing. In other words, if the Trade-marks Office reviews a letter of consent and remains of the view that the marks are confusing, the citation will be maintained.
For the past year or so, and as reported in our article “Letters of consent in Canadian trade-mark Practice – A possible change on the horizon,” the Trade-marks Office has indicated that it was considering changing its position. More specifically, the Trade-marks Office informally indicated that it was considering changing its practice such that if a letter of consent were filed, the citation of a prior-filed application or registration would be withdrawn.
The Canadian Trade-marks Office has just advised the profession that it is no longer considering a change in practice. Accordingly, while letters of consent can still be filed and will be reviewed, they will still not be binding on the Trade-marks Office. The Trade-marks Office will continue to have discretion to maintain citations despite the filing of any letters of consent.