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.”