Trade-Marks Examination Manual (page 22 of 55)

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III.8 Confusion — Person Entitled Re: Co-pending Applications — Section 16

If a search of the pending indexes reveals an application for a trade-mark which is considered to be confusing with the mark being examined, the examiners must make a decision as to which applicant is entitled to registration. Historically, decisions about entitlement were made by determining that the person who first used a mark in Canada was the one entitled to register the mark. There are now bases for filing in Canada other than use. Dates of entitlement for applications based on making known, proposed use and foreign registrations are provided for in section 16 of the Trade-marks Act. The following chart sets out the bases upon which trade-mark rights may be claimed in Canada and the date of entitlement associated with each basis of filing. See subsections 16(1), (2) and (3). Also see sections III.8.4, V.10 and V.11 of this manual.

III.8.1 Entitlement

III.8.1.1 Disposition of Application

The application for a mark which is deemed to be unregistrable may meet with several ends.

1. The applicant may voluntarily abandon the application.

   or

2. Default procedures may be instituted pursuant to section 36.

   or

3. The application may be refused pursuant to paragraph 37(1)(c).

   or

4. The application may proceed to advertisement if the applicant overcomes the objections.

III.8.2 Abandoned Applications

An abandoned application cannot be cited against a pending application. See paragraph 37(1)(c).

III.8.3 Concurrent Use of Confusing Marks

Although examiners are not responsible to take action in the event of concurrent use of confusing marks, they may at least familiarize themselves with the provision on this matter as set down in subsection 21(1) of the Trade-marks Act and as provided for in the event a court order is issued.

Concurrent use would occur where the owner of the confusing mark had "in good faith used a confusing trade-mark" and where "continued use in a defined territorial area" would not be considered contrary to the public interest.

III.8.4 Notification of Applicants

When confusion is apparent between pending trade-marks, the examiners will immediately accept for advertisement the application of the entitled person, as long as no other objections or requirements exist. At the same time, the examiners will notify the non-entitled party of the action and give the reason for non-entitlement, namely, the earlier date of entitlement of the other application.

An entitled application encountering a co-pending confusing application which is being opposed will not be withheld in any circumstance, particularly pending the resolution of the opposition proceedings, but will proceed to advertisement in the Trade-marks Journal. See Anheuser-Busch, Inc. v. Carling O'Keefe Breweries of Canada Ltd. (1982), 69 C.P.R. (2d) 136.

An entitled application encountering a co-pending application which has been allowed will not give rise to a section 16 objection. The examiner will merely draw attention to the allowed application and approve the subject application as long as no other objection or requirements exist.

Where the non-entitled person's application encounters a co-pending confusing application which has been published in the Trade-marks Journal, the non-entitled person should receive an action citing the confusing trade-mark and be informed of the publication date.

Where the non-entitled application being examined encounters a co-pending confusing application which is the subject of opposition proceedings, it will not be held in abeyance pending the opposition outcome, but will receive an action citing the confusing trade-mark and a time limit of four months in which to reply. See Anheuser-Busch, Inc. v. Carling O'Keefe Breweries of Canada Ltd. (1982), 69 C.P.R. (2d) 136.

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 objection or requirements exist, notwithstanding that it may be too late to prevent the publication of the non-entitled mark. The deadline for withdrawal of approval in such a case is the actual date of publication. The examiners will issue a report advising the nonentitled party that a subsequent application has been filed with an earlier entitlement date and will withdraw the approval. The examiners will also advise that an erratum will be published stating that the publication of the non-entitled application was in error. However, if the co-pending confusing application is discovered after the publication date, then the process becomes irreversible since the finality is the advertisement. See Rapido Plus case. Beaver Knitwear Ltd. v. Registrar of Trade Marks (1986), 11 C.P.R. (3d) 257.

III.8.5 Same Entitlement Date

In cases where both parties have the same entitlement date (i.e., the same date of first use or same date of filing, etc., for similar or identical wares 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, pursuant to section 16.

III.9 Reference Sources

Chapter IV of this manual — The Examination of the Mark — provides a complete list of all reference sources available to the examiners, i.e., dictionaries, encyclopedias, etc.

III.10 Preparation of File for Advertisement

The following is a checklist for preparing the file for advertisement.

1. Bring forward the acceptable application, supporting certificates and the proof sheet.
2. Affix the drawing of the mark in the lower left-hand corner of the first page of the application.
3. Enter in the upper right-hand corner of the application:
   1. Serial Number
   2. Filing Date
   3. Priority Date (if applicable)
4. In the case of a subsection 16(2) claim, enter the registration number and date in the margin to the left of the claim (if this information is not contained in the claim).
5. Using the pre-printed advertisement sheet (sample follows), indicate all pertinent information to appear in the Trade-marks Journal, as well as other information that will subsequently appear on the registration certificate.

Advertisement Sheet - Feuille de Publication

Advertisement Sheet also available as PDF * (67 KB, 1 page) | DOC * (54 KB, 1 page)

Change of Agent - Changement d'agent ______________________________________

Change of representative for service - Changement de représentant pour signification

Change of name or transfer ________________________________________________

Changement de nom ou transfert

Priority filing date - Date de priorité ________________________________________

Certification Mark - Marque de Certification

Distinguishing Guise - Signe Distinctif

or -ou _________________________________________________________________

or -ou _________________________________________________________________

or -ou _________________________________________________________________

Amendment of wares (filing date) ___________________________________________
Modification des marchandises (date de production)

Section 67(1) Nfld. No. - Article 67(1) Terre-Neuve Nº__________________________

Section 37(3) (Flag File) - Article 37(3) (Étiqueter le dossier) ____________________

Applicant is the owner of Registration No.
Le requérant est le titulaire de l'enregistrement Nº _______________________________

Associated marks - Marques liées:____________________________________________
or - ou Identified on Search Report by RED check mark - Cochées en ROUGE sur la feuille de recherche

Other instructions
Autres renseignements
__________________________________________________________________
__________________________________________________________________
__________________________________________________________________

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