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Summary of the Problem or Issue
The Implementation Steering Committee sought recommendations for use, risk mitigation strategies and options for seeking trademark registration for the PAGE 1+ brand. Borden Ladner Gervais (BLG) was engaged to provide this research and recommendations. The final recommendation from BLG is to:
refrain from filing an application to register the PAGE 1+ mark; and
always use the mark in the following design format on print and electronic materials, websites, and releases, to the extent possible:
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Discussion
BLG arranged for a full Canadian trademark clearance search for the proposed mark PAGE1+ for use and registration in connection with a broad scope of goods/services described as:
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platform as a service for the operation of library management systems (Class 42).
Summary of BLG Findings:
There is some risk of using the PAGE1+ mark with the new library services platform in view of the following third party trademark registration/applications identified by the search (please see research below). However, BLG considers the risk to be manageable by using a design version of the PAGE1+ mark, as oppose to using PAGE1+ in standard characters, to help distinguish the mark from these third party marks.
Research
To mitigate the risk of receiving a demand letter from either THINKINGDOM MEDIA GROUP LIMITED (a Hong Kong company) asserting trademark infringement on the basis of its registration for with “providing electronic publications, namely publication of non-downloadable electronic periodicals online” or OnePlus Technology (Shenzhen) Co. asserting trademark infringement on the basis of its (pending) applications for and with “lending library services”, we recommend:
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If the registered owner responds by filing evidence of use or special circumstances excusing non-use, we would review the evidence that is filed, assess how strong the case is, and determine whether to file written arguments (i.e. attacking vulnerabilities in the evidence) and/or we could seek to negotiate a co-existence agreement with the registered owner. It is difficult to provide an estimate as the legal fees for the foregoing steps would depend upon the nature of the evidence that is filed, and time spent, but could range from CDN $5,000-10,000+. This is why we recommend doing a use investigation beforehand so that we are fairly confident that the registered owner will not respond to the Section 45 Notice.
Annexes and Supporting Information
Recommended Actions
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