Intellectual Property

Due diligence key when bringing s. 45 application

Toronto intellectual property lawyer Taras Kulish says when faced with two confusing or similar trademarks, due diligence and preliminary searching goes a long way.

Kulish, in a recent presentation to the Ismaili Food Services Alliance held at The Ismaili Centre, Toronto, shared with the crowd the importance of conducting a thorough search before bringing a s. 45 application under the Trade-marks Act.

Section 45 proceedings can have the effect of knocking off the registration of a mark that has not been used by a registrant within the three years preceding the s. 45 notice if no valid excuse for non-use is filed. Properly used, a s. 45 application will clear out the deadwood from the trademark registry and will pave the way for a successful trademark registration of a confusing or similar mark in the same field.

Kulish detailed a situation he encountered with a client — a small, family owned ice cream and juice company — that wanted to register its flagship trademark. He says the client had been using the mark for a number of years but had not registered it.

"We discovered a large, multinational food conglomerate had registered a mark that was nearly identical,” Kulish, a senior associate with Steinberg Title Hope & Israel LLP, told the gathering. “There would have been confusion between the two marks because they both related to similar products — 'frozen confections on a stick' versus 'ice cream.'"

However, Kulish says his client had a suspicion that the competing product had not been produced for a number of years.

“We decided to proceed by a s. 45 application,” he says. “However, we wanted to make sure of our chances of success so we hired a private investigator who specialized in commercial matters.”

Kulish says the investigator did a thorough job; he went to the manufacturing plant and was able to track down and interview a retired, veteran plant manager. The investigator inquired about when the manufacturer had last produced the product in question.

“At the plant, no one could remember producing the product for a few years,” Kulish recalls. “The retired plant manager confirmed this. We waited an additional year after we received the investigator’s report, to account for faulty memory and then we filed a s. 45 request, which wasn’t defended. The other side did not present any information as to why they hadn’t used the trademark in the relevant period of time.”

Kulish says the take-home from this case is the value of the preliminary search.

“We found a directly competing mark that was confusing, so we had to perform due diligence and investigate. We hired an investigator; the cost was reasonable and it paid huge dividends in the final result — my client was able to get its flagship mark registered.”

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