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Early opposition saves money & time in trademark registration process

Originally published in

Rights holders can save themselves time and money by opposing trademarks before they’re registered, Toronto intellectual property lawyer John Simpson tells

In a recent Federal Court decision, the judge expunged a beer manufacturer’s trademark after finding it could be confused with a similar mark that was already in use by a wine company years before it was registered for beer.

Although the beer company did not defend the court proceeding, Simpson, principal of Shift Law, a boutique firm specializing in IP and new media law, says the victorious wine producer could have saved time and money.

“At the end of the day it worked out for them and the trademark was expunged, but it probably cost them more than it should have,” he says. “You can save yourself money, heartache and risk if you can spot these things early before you’re required to go to court.”

According to the decision, the beer company registered its “B-Side” mark in 2015, claiming to have used it since 2013. The wine manufacturer missed the two-month period to lodge an opposition, but later wrote to challenge the applicant’s assertions about the mark and provided evidence of its own use of the name on bottles dating back to 2011.

Simpson, who was not involved and comments generally, says a trademark lawyer or watch service subscription would have picked up the beer company’s application to register the mark at an earlier stage which would have allowed the wine company to meet the two-month deadline for opposition.

“If they had taken advantage of the oppositions process, the application would likely have been abandoned without the need to go to court. And filing an opposition is much more cost-effective than applying to expunge a trademark,” he says.

Instead, court records suggest the wine company only found out about the ongoing trademark application for use with a beer when it filed its own application for the same mark.

After accepting that the wine company used the mark first, the judge explained that he must be convinced that the two were “confusingly similar” in order to expunge the beer maker’s registration.

“A number of the prescribed factors lead me to conclude that a rushed consumer would likely infer that [the wine] and [the beer] were sold by the same company,” the judge wrote in expunging the registration.

Those included the “inherently distinctive” nature of the B-Side mark in relation to alcoholic beverages and the fact that both products fell within the same class of goods and were sold in many of the same stores.

Even if the beer company had defended its mark in court, Simpson says it’s likely the court would have ruled the same way and he says it will be interesting to see if either side makes a request for costs.

“You could make a case that the beer company should be on the hook for elevated costs because they continued with their registration, even after they were warned about the wine company’s mark. It would have been more cost-effective for everyone, including the court, if they had withdrawn their application then. By not responding to the expungement proceedings, they seem to have conceded that they had no case,” he says.

“On the other hand, you could argue that the wine company had an obligation to oppose the original trademark application and that it’s not the beer company’s fault they didn’t.

“It could cut both ways, so it will be interesting to see what the court has to say about the relative fault of the parties,” Simpson adds.

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