Below is an excerpt from John McKeown’s April 2016 Monthly IP Bulletin.
I would like to continue the discussion concerning developing effective brand management policies. This month I would like to discuss policing the marketplace.
Policing the Marketplace
A mark may acquire distinctiveness through extensive use in the marketplace which shows that the mark is known to purchasers of the wares or services in issue. The proper management of brand expression can result is increased distinctiveness. However, distinctiveness may be reduced if other competitors are using trademarks or trade names similar to the brand owner’s brand name.
The key to managing distinctiveness is obtaining the relevant marketplace information and then taking appropriate steps. One simple method of doing this is by monitoring the Trademarks Journal, either directly or through the use of a watch service.
In Canada, trademark applications which have been approved by the Registrar of Trademarks are advertised in the Trademarks Journal. The Journal includes a reproduction of the application including a representation of the trademark in issue. Within two months of the advertisement of the application anyone may, on payment of a prescribed fee, file a statement of opposition.
It is important to review the Trademarks Journal since a brand owner’s assessment as to whether a trademark is confusing with its registered trademark, may vary substantially from the determination of the examiner at the Trademarks Office.
Also, where the Trademarks examiner is in doubt whether a claimed trademark is registrable by reason of a pre-existing registered trademark, the examiner may approve the application and, by registered letter, notify the owner of the registered trademark of the advertisement of the application. There has been a significant increase in the number of these letters. Such letters should be carefully considered by a brand owner.
In many cases it may be useful to seek an extension of the time in which to file a statement of opposition so that discussions may take place with the applicant or its representatives concerning whether the application should be withdrawn or some other settlement arrived at. If this is not possible an opposition can be commenced.
More to follow next month concerning this topic.
Click here to read the entire mailer.
These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.