A common objection raised during trademark prosecution is confusion with an existing trademark registration. One approach to overcoming such an objection is to secure a consent agreement from the owner of the cited registration. Typically, a consent agreement provides that the owner of the cited registration consents to the registration and use of the applicant’s trademark. Additionally, there may be statements from the parties confirming that there have not been any instances of confusion in the past and committing to use best efforts to avoid any likelihood of confusion in the future.
In the United States, consent agreements are accorded great weight. The United States Patent and Trademark Office’s position is that it “… should not substitute its judgment concerning likelihood of confusion for the judgment of the real parties in interest without good reason…”. (Trademark Manual of Examining Procedure, s. 1207.01(d)(viii), October 2013).
In Canada, however, the situation is different. The view of the Registrar of Trade-marks is that consent agreements are merely considered as one of the “surrounding circumstances” to be regarded when assessing possible confusion. As a result, it is not uncommon for the Registrar to ignore a consent agreement and continue to maintain an objection based on confusion with a registration. This is typically justified by the common refrain that one of the purposes of the Trade-marks Act (the “Act”) is protection of the public and that the Registrar therefore has a duty to protect the public from confusion.
Such an approach is arguably not warranted under the Act. Even allowing that one of the purposes of the Act is to protect the public, this purpose is achieved by various provisions that, for example, allow parties to stop others from passing off (s. 7(b)), to stop others from making use of any description that is false and likely to mislead the public (s. 7(d)), to stop others from infringing registered trademarks (s. 20), to oppose pending applications (s. 38), and to expunge invalid registrations (s. 18). Unlike the Competition Act, which explicitly states that the Commissioner of Competition is to administer and enforce the provisions of the Competition Act and may conduct inquiries or refer criminal matters to the Attorney General, the Registrar’s duties (especially at the examination stage) are limited.
The Registrar’s duties are completely circumscribed by the provisions of the Act. Although perhaps a laudable aim, nothing in the Act specifically provides that the Registrar has a general duty to protect the public from confusion. Section 37(1)(b) does allow the Registrar to refuse an application if he is satisfied that the trademark is not registrable (which could include being confusing with a registered trademark). However, the Registrar is not in the best position to conduct a complete assessment of confusion at the examination stage. In assessing confusion, the Registrar is required to have regard to all surrounding circumstances, including those specifically enumerated in s. 6(5). Unfortunately, the Registrar is limited to relying mainly on the particulars set out in the trademark register, which are unproven and are not necessarily current.
This limitation was apparently recognized by Parliament, and therefore s. 37(3) provides that if the Registrar is, because of a registered trademark, in doubt as to whether an applied-for trademark is registrable, he is to advertise the application and notify the owner of the registered trademark (presumably to alert the owner to consider filing an opposition). In other words, only where the Registrar has no doubt that the trademark is not registrable should he refuse the application.
When there is a consent agreement, it is difficult to see how the Registrar can still have no doubt that a trademark is not registrable because of confusion. The parties, who are in the marketplace and have the best knowledge of the relevant circumstances, have agreed that there is no likelihood of confusion. They may also agree that they are not aware of any instances of confusion and that they will do their best to avoid any likelihood of confusion in the future. Faced with this, it is difficult to see how the Registrar can maintain that he has no doubt that there is still a likelihood of confusion. Instead, the Registrar should follow the procedure set out in the Act, namely advertise the application and notify the owner of the registered trademark. Of course, if there is a consent agreement, the owner of the registered trademark is unlikely to oppose the application, but, rightly or wrongly, that is the course set out by the Act.