Legal news and trends for Canadian in-house counsel and c-suite executives
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By Marcus Gallie and Lisa Reynolds Keeping tabs on the competition 'Watch searching' observes competitors, protects your trademarks. a glimpse of the competitors' future plans is to monitor their trademark fil- ing activities. This can be done by way of a "watch search." Watch searches are typically pro- I vided on a subscription basis and can be arranged through your company's trademark counsel. They are ongo- ing and permit you to receive almost immediate notification of any newly filed applications or recently published trademarks which may be of interest or concern to your company. Most watch searches are carried out by "owner" or by "trademark." They can be restricted to certain classes of goods and services or cover a broad range of elements. It is also possible to limit the geographic scope of a watch search to Canada or include a number of differ- ent jurisdictions, such as the United States and Europe. If your company carries on business internationally, a worldwide search may be appropriate. A watch search by owner will locate any newly filed or published applica- tions which stand in the name of a particular applicant. This type of watch search is often useful if you have a specific competitor that you want to keep an eye on. It will allow you to see what new marks your competitor has recently applied to register and what products or services it intends to offer t is obviously advantageous to know about a competitor's prod- uct before it is launched or a new service that is about to enter the marketplace. One way to get in association with those marks. A watch search by trademark will locate any newly filed or recently published trademark applications for marks which are identical or similar to your company's trademarks. This type of search is usually quite sophisticated in nature and can locate visually or phonetically similar marks, as well as Once a trademark has been registered for a period of five or more years, it becomes "incontestable" under s. 17(2) of the Trade-marks Act. This means that it cannot be expunged, amended, or invalidated on the ground of previ- ous use or making known, unless it can be established that the person who adopted the registered trademark did so with the knowledge of that previous use or making known. In addition, case law suggests that a registration may be a complete defence to passing-off and trademark infringe- ment. This can be seen in cases like It is significantly more cost-effective to oppose a trademark application in the trademarks office, than it is to challenge a trademark in the Federal Court once it has become registered. marks which are similar in meaning. Watch searches are important, as they can enable your company to bet- ter protect its trademarks and enforce them against third parties. A watch search can also alert you to the exist- ence of a potentially confusing trade- mark prior to its registration, so that your company can oppose the applica- tion or take other appropriate steps before the passage of time and use by the competitor makes it overly difficult or costly to do so. It is significantly more cost-effective to oppose a trademark application in the trademarks office, than it is to chal- lenge a trademark in the Federal Court once it has become registered. Moreover, the longer a trademark has been registered, the more difficult it can become to challenge its validity. Molson Canada v. Oland Breweries Ltd. in 2002, and Philip Morris Products S.A. v. Malboro Canada Ltd. in 2010, which is currently under appeal. Thus, if an application for a poten- tially confusing trademark is not opposed and subsequently it is regis- tered, it may no longer be possible to assert your trademark rights against the owner of the mark, without first taking steps to invalidate its registra- tion. All in all, opposition proceedings are a very useful tool to protect your company's trademarks, but first you need to know what the competition is doing. IH Marcus Gallie is a partner and Lisa Reynolds is an associate at Ridout & Maybee LLP's Ottawa office. INHOUSE JUNE 2011 • 13