EXPERT INSIGHT 54 WWW.LAWYER-MONTHLY.COM | JUN 2022 monitoring the marketplace to enforce against subsequent users. The ability to obtain an interlocutory injunction based on a pending trademark application in such circumstances may become a powerful tool in trademark enforcement programs, and one that may be available before putting a mark into use and before building reputation and goodwill in the mark. What does the outcome of the dispute imply for “hollow” trademark applications and the extent to which they are favoured in Ontario court? The plaintiff submitted that a novel issue was raised by the amendments to the Trademark Act removing the requirement to show use of the trademark either prior to filing or to obtain registration. The serious issue to be tried related to whether trademark rights crystallise when the applicant gains a right to secure registration (the application date) or when registration is in fact secured (the registration date). It was the plaintiff’s submission that these claims crystallise on the application date. The defendants disputed this and maintained that the claims crystallise on the registration date. As noted, this issue is pending the resolution of the claims on the merits. The court’s recognition that there is a serious issue to be tried regarding the priority issue may signal an appetite to broaden the rights of trademark applicants even where there has not been any use of the applied-for trademark. Indeed, the granting of the interlocutory injunction on the basis of the prior pending application suggests that trademark applicants have enforceable rights without registration and despite there being no use of the mark, provided there have been bona fide steps to enter the market. The case did not involve a “bad faith” filing – such as an application being filed without any genuine intention to use the mark or trademark “squatting”, or a case where there were no demonstrable preparations to use the mark. Such facts may have resulted in a different outcome. Is the ruling likely to colour the advice you and others in the trademark community issue to future clients? The decision encourages being a “first filer” in Canada, and before being a “first-mover”, to undertake trademark clearance and put weight on pending applications noted by a search, irrespective of whether the mark is in use. As discussed above, if it is found on the merits that trademark rights are enforceable on the basis of pending trademark applications prior to registration where use has not yet occurred, prompt and early trademark filing will be even more important in Canada, and risk analysis when undertaking trademark clearance may be coloured. Given the pace of Canadian examination, if clearance searches identify a pending application for a possibly confusing mark, there may be uncertainty for some time, which is likely to present additional challenges. The decision may also impact advice with respect to enforcement by owners of pending trademark applications, with a view to preserve a strong entry to the market and pre-emptively prevent confusion. What significance does the case have regarding interlocutory injunctions and how they are used in Canada? Interlocutory injunctions in trademark The ability to obtain an interlocutory injunction based on a pending trademark application in such circumstances may become a powerful tool in trademark enforcement programs
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