Canada, like many other countries, has developed a relatively user-friendly electronic filing system for Canadian trade mark applicants. However, is the apparent ease with which an applicant can file and prosecute an application having unintended effects?
In an effort to consider this question, applications filed by individuals and small to mid-sized Canadian businesses without a recorded agent/representative for service were reviewed for deficiencies likely to render the applications refused entirely or in part if opposed. Results suggested that more than 20% of such applications may contain fundamental problems that could prove fatal. Problems noted included inaccurate or incomprehensible goods and services specifications and, on simple investigation, invalid claims to prior use or proposed use.
It would seem individuals and small entities could be paying a high price for applying for trade mark protection without professional advice. However, are these questionably sound applications also resulting in more enforcement being required by others? In order to answer this question we sought to determine whether a disproportionate number of unrepresented applicants were involved in roughly 5% of all applications that are opposed.
Random samples of marks published during a recent period of several weeks suggested more than 10% of applications were filed and prosecuted without a qualified representative. Excluding large companies on the assumption that such entities would have in-house expertise, we were left with a figure of 8% who were small, unrepresented applicants.
We then considered all oppositions filed in a two-week period and found that close to 20% of the opened opposition cases involved unrepresented individuals and small entities. The implications of these findings are that it is not just the unrepresented small applicant who is disadvantaged by failure to obtain professional assistance, rather all trade mark owners suffer from enforcement costs that might have been avoidable had sound professional advice been provided to the applicant.
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| Coleen Morrison |
Marks & Clerk Canada
PO Box 957, Station B
Ottawa ON K1P 1C2
Canada
Tel: +1 613 236 9561
Fax: +1 613 230 8821
info@marks-clerk.ca
www.marks-clerk.ca