Once the trademark has been registered, you must still maintain and police it. The consequences of not doing so can be serious. For example if you fail to properly respond to CIPO requests for documents or information, or if you fail to file for a renewal, your registration may lapse or be considered abandoned. If you do no monitoring and others use the trademark, even without your knowledge, you may end up losing some or all of your trademark rights.
The purpose of maintenance is to ensure that your trademark registration is not accidentally cancelled because of the failure to file necessary documents, respond to deadlines and answer correspondence from other parties. One of your primary obligations is to keep your contact address current with CIPO. If you fail to, you could lose your trademark registration.
Whether you have a registered or unregistered trademark, you need to protect it from misuse by others. If you permit someone to use the trademark without your consent, then you risk losing your trademark rights. It is your responsibility to monitor the use of your trademark, not the government’s. In “A Guide to Trademarks,” the Canadian Intellectual Property Office (CIPO) advises as follows:
”One of the functions of the Trade-marks Office is to prevent anyone else from registering a mark that is the same as or confusingly similar to your mark. It does not, however, keep an eye out for cases of infringement. It is your responsibility entirely to monitor the marketplace and, if you find someone using your registered trade-mark or a mark or a trade name that is confusing with your mark, to take legal action. Someone who infringes on trade-mark rights may be accountable to you by way of an injunction, i.e., an order to cease the infringing activity and/or damages.”
When a trademark registration is granted to a trademark that is similar to yours, it may cause confusion among your customers as to which wares and/or services come from which source. Although CIPO is not supposed to grant a registration in these circumstances, what you consider confusingly similar and what the Examiner considers confusingly similar may be quite different. Also, you have an awareness of market circumstances that the Examiner likely does not. There are many cases in which identical trademarks are granted. In theory, they are not supposed to interfere with one another, but this is not always the case. If you don’t monitor, potentially confusing trademarks could be registered without your knowledge. Monitoring makes you aware of potential problems, and gives you the opportunity to do something about it in a timely fashion. Otherwise, you may not find out until it’s too late. In the end, it is your responsibility to monitor your own mark. The government does not do it for you.
It is therefore recommended that you maintain some ongoing monitoring program designed to maintain, protect and enhance the value of your trademark. Such a monitoring program should include regular reviews of trademark databases, journals and other relevant publications. In doing such reviews, you should also keep in mind that you have to look for sound-alikes and variants as well as exact matches. For example, your trademark may be for COOL CATS. If you search for exact matches only, a KOOL KATS trademark would not come up, but it would nevertheless be a potentially infringing mark.