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:

Research

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:

• library management software (Class 9);

• library services; on-line library services; on-line academic library services; research library services; mobile library services (Class 41); and

• 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.

1. THINKINGDOM MEDIA GROUP LIMITED (a Hong Kong company) asserting trademark infringement on the basis of its registration for Image 1 below with “providing electronic publications, namely publication of non-downloadable electronic periodicals online”.

2. OnePlus Technology (Shenzhen) Co. asserting trademark infringement on the basis of its (pending) applications for Image 2 and Image 3 with “lending library services”.

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.

The reason BLG recommend not filing a regular trademark application at this time is because of the third party marks identified in their search, which they believe will likely be cited by a trademarks examiner as confusing with OCLS’s PAGE1+ mark and block its registration. In addition, it is possible that the owners of the third party marks could oppose the registration of the PAGE1+ mark.

Discussion

If OCLS receives a demand letter from either of these entities, BLG believe we would have a good basis to defend OCLS’ use by arguing that there is no reasonable likelihood of confusion between OCLS’s mark and either party’s marks in terms of visual resemblance, as well as the differences in the parties’ actual services and fields of use.

BLG will diarize our file for a year from now, to revisit possibly filing a trademark application for the PAGE 1+ brand. At that time, they would determine the status of the above-noted third party marks in Canada, and if registered and in good standing, conduct a use investigation to determine whether there is any use of the marks in Canada.

If there does not appear to be any use of the above-noted third party marks in Canada, they could initiate summary non-use cancellation proceedings (i.e. Section 45 Proceedings) to seek to cancel the registrations, thereby clearing the way for OCLS to secure registration.

About Section 45 Proceedings:

Section 45 Proceedings can be initiated by any interested party against a registration that has been registered for 3 or more years. To initiate Section 45 Proceedings, we file a request with the trademarks office and pay a government fee (the cost to do this $750 +tax per registration). The trademarks office then issues a Section 45 Notice and sends a copy to the registered owner and its agent. The Section 45 Notice will require the registered owner to file and serve evidence, within three months from the date of the Notice, showing:

• use of the registered trademark in Canada at any time during the three-year period immediately preceding the date of the Notice (the relevant period) with the registered goods and services; or

• the date when the registered trademark was last used in Canada and special circumstances excusing the non-use.

If the registered owner does not respond to the Section 45 Notice, the registration will ultimately be cancelled. Further costs of approximately $500 would be incurred for monitoring the file, reviewing and reporting developments, including the final decision of the registrar. (If further follow-up research indicates that there is no use of the mark online, it is likely that the registrant will not respond to the Section 45 Notice.)

If the registered owner responds by filing evidence of use or special circumstances excusing non-use, BLG 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 BLG 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 BLG recommend doing a use investigation beforehand so that we are fairly confident that the registered owner will not respond to the Section 45 Notice.

Options for Seeking Trademark Registration

Should OCLS and the colleges eventually decide to seek trademark registration, BLG propose to file the official mark application in the name of one of the college members of the consortium. This is because BLG consider there to be low likelihood that the Trademarks Office will consider OCLS to be a “public authority”. As such, OCLS will not likely be able to secure an official mark for PAGE1+.

Annexes and Supporting Information

Two additional files may be of interest:

• Full Canadian Trademark Report

• BLG Email Thread

• Re Trademark Advice Needed

These documents are stored on the OCLS H Drive. Please ask OCLS staff member for a copy.

Recommended Actions

• 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: