5.4.1 Additional identical and similar mark considerations

When considering potential citations of identical and/or similar marks, under section 25 of the Act, the Examiner should take into account section 15 of the Act and the definition of a collective mark under section 5 (1) of the Act. In particular, when searching the register the Examiner needs to keep in mind that the function of certification, collective and standard trade marks are different.

A standard trade mark distinguishes goods and services that originate from a single party whereas a collective mark distinguishes the origin of goods and services from a member of an association from those of a non member. A certification trade mark does not indicate origin. Rather, it indicates that some characteristic of the goods or services provided has been certified by the owner of the mark, who does not trade in the concerned goods or services.

Where an Examiner finds an identical or similar mark on the register for the same or similar goods or services, they should take this as prima facie evidence that the mark cannot serve the function specified for it under the Act. The Examiner should raise a concern that the mark on the Register has priority over the applicant’s mark.