What is real
is not external form.



CONSTANTIN BRANCUSI

Misleading trademark. Solution

06.06.2018


Even if your trademark is stated as misleading there is still a way to register it.

 

Context

We currently represent one of our Swiss Clients in Canada. He intended to register several trademarks which include the company owner’s name.

 

Issue

The National IP Office of Canada conducted a research on the national trademarks which could be similar to our Client’s and rejected our application. The Office stated that our Client’s trademark is too similar to other national trademarks and can be misleading for Canadian consumers.

Deceptive trademarks suggest a component, ingredient or objective that would mislead consumers. For example, an ice cream branded VANILLA SNOW but flavored chocolate might be deemed deceptive. Misdescriptive marks are not “deceptively misdescriptive” unless there is some element of deception. Thus, if VANILLA SNOW was used for a paint primer there would be no deception since a reasonable consumer would not think the primer would taste like vanilla.

 

Solution

Comming back to our case, we have initiated a coexistence agreement to convince the national IP Office that our trademark isn’t misleading for Canadians.

A trademark coexistence is an agreement made by two companies which have the aim to use a similar trademark for marketing purposes. This kind of agreements are often made as parties only require the regional use of their trademarks, and therefore other enterprises use of a trademark will not harm their business. Coexistence agreements can also involve designs, copyrights and even patents.

The purpose of a trademark coexistence agreement is that often trademarks are used by multiple companies in “good faith”. The absence of a formal agreement does not undermine any enterprise using the mark as they are in different global regions. However, as the enterprises grow, overlaps can develop, and both parties can have substantial rights for using the trademark. In certain cases, companies who are expanding and using the same or a similar trademark usually enter in a coexistence agreement for the purpose of avoiding usage of the trademark in a way which is undesirable or infringing. Coexistence agreements can offer practical solutions to companies who are concerned about being sued for trademark infringement, as proactive agreements can avoid the large cost of litigation.

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