A Prospective Client Who Wants to Block a Current Client, a Missed Deadline, and a Requested Untruth
You are a registered trademark agent and partner in a five-person IP boutique in Toronto. For three years the firm has acted for Crumb & Co. Ltd., a bakery chain, and is prosecuting its application for CRUMB & CO. (classes 30 and 43), advertised on 14 July 2025. On 21 July 2025 a new prospect, Wren Roasters Inc., asks the firm to file an application for WREN & CRUMB for coffee and bakery services; at intake its founder says they intend to 'block that bakery's application' because Crumb & Co. opened across the street from their flagship store. Separately, a junior agent admits she missed the deadline to file a counterstatement in an opposition for another client, Marlow Foods, and that application is now deemed abandoned. Marlow's general counsel asks the firm to 'write a letter saying the instructions arrived late' so the board will not blame the legal department. Finally, Crumb & Co. asks you to 'tick off' the use statement so its file can proceed, saying its first Canadian sale was in 2019, although its sales records begin in 2023.
1. Can the firm act for Wren Roasters? Analyse the conflict and set out what the firm must and must not do.
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The relationship. Crumb & Co. is a current client, and the firm holds confidential information about its business, its expansion plans and its filing strategy. Wren's stated objective is to harm Crumb by blocking its application. That is not a peripheral clash; it is the substance of the retainer.
The rule. Under the CPATA Code of Professional Conduct (mirroring the provincial law society rules), an agent must not act where there is a conflict of interest between clients, and must not act for one client against another current client. Consent can sometimes cure acting adversely to a current client in an unrelated matter, but only where the matter is genuinely unrelated and no confidential information could be used. Here the matters are related - Wren's purpose is to attack Crumb's application - and the firm's knowledge of Crumb's plans and timing would be directly relevant to any opposition strategy. Consent cannot cure that, and the firm should not seek it.
Imputation. In a five-person firm the conflict is the firm's conflict. Screens are generally unavailable to cure a current-client conflict, and in a firm this small a screen would be illusory in any event.
What the firm must do. Decline the Wren retainer promptly so Wren is not prejudiced - any opposition to Crumb's advertisement must be filed within the two-month window, so a quick referral matters. Do not reveal to Crumb anything Wren disclosed at intake, and do not use Crumb's information for anyone's benefit. Document the decision and the reason on the file. Finally, check what was said at intake: if the firm volunteered the advertisement date from Crumb's file, that is a separate and serious breach to be addressed internally.
2. How should the firm handle the missed counterstatement deadline, and what should it say about the requested letter?
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Duty of candour. As soon as an error that may prejudice a client is discovered, the client must be told - promptly, in writing, with the consequences and a proposed remedy. Here the counterstatement was not filed and the application is deemed abandoned. Marlow must be told before it learns from the Registrar.
Remediation. Check whether reinstatement is available: an application for reinstatement with the fee, filed within the prescribed period, may restore the application. If it is not available, or fails, consider a fresh application - new filing date, loss of the original priority, exposure to intervening third-party rights and a possible entitlement challenge - and check whether a foreign application is still within the six-month Paris priority period, which could preserve an effective date. Advise the client of all of this in writing and confirm instructions.
Liability and insurance. Recommend that Marlow obtain independent advice on the firm's potential liability, notify the firm's professional indemnity insurer, and consider adjusting or writing off fees for the matter. Those steps are not admissions; they are the expected response.
The letter. The firm must not state something it knows to be untrue, and must not help a client mislead its own board. If the true position is that instructions genuinely arrived after the deadline, an accurate letter supported by the file is fine. If the deadline was missed because of the junior's error, a letter saying otherwise is a misrepresentation and professional misconduct. Offer an accurate letter explaining the error and the remediation, and if Marlow insists on a false account, decline and consider whether the retainer can continue. Then fix the system: central docketing, a second-level deadline check and supervision of junior agents.
3. How do you respond to Crumb & Co.'s request to 'tick off' the use statement, given the 2019 date and the 2023 records?
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There is no use declaration to tick. Since 17 June 2019 Canada has not required a declaration of use before registration. The use question now arises at filing, because the application must state its basis - use, proposed use, use and registration abroad, or making known - and, where use is claimed, the date of first use in Canada. Signing or filing that statement without a factual foundation is a misrepresentation, not a formality.
Verify the date. Ask for the evidence: the first invoice, the first shipment, the first sale in the normal course of trade with the mark associated with the wares (on the wares or packaging at the time of transfer) or the first performance or advertising in Canada for services. The date of first use is not the date of incorporation, the date of the first advertisement for wares, or the date the brand was conceived. If the mark has been used by a distributor or franchisee, confirm the written licence and the control that makes s. 50 attribution available.
Correct the record. If the true date is later than 2019, amend the application with written instructions. If there was no use in Canada at the filing date, the use basis was wrong: take instructions on whether the application can be supported and, if not, whether to refile on a proposed-use basis, warning the client of the consequences - a new filing date, loss of the earlier date against intervening applications, and the possibility of an entitlement challenge under s. 16.
The professional point. A knowingly false statement about use can invalidate the registration and exposes the agent to discipline. The correct answer to the client is that the firm will not sign a statement it cannot support, and that correcting the date now is far cheaper than defending the registration later.