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:

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:

• 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 (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

1. 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:

a. refraining from filing an application to register the PAGE 1+ mark; and

b. always using the mark in the following design format on print and electronic materials, websites, and releases, to the extent possible:

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

1. We will diarize our file for a year from now, to revisit possibly filing a trademark application for the PAGE 1+ brand. At that time, we 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.

1. If there does not appear to be any use of the above-noted third party marks in Canada, we 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, 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

Expected Outcome