Creativity Life Cycles : Canadian Trademark Agent and Lawyer : Joshua MacFadden : MacPherson Leslie & Tyerman Law Firm : Patents, Intellectual Property

Today the Trademarks Opposition Board ("TMOB") announced a consultation period from June 28th to September 20, 2010.  The amendments, largely intended to streamline the opposition process and communications between the parties and the TMOB, include:

1. The potential for electronic transmission of evidence, provided that the submitting party maintain originals for a prescribed timeframe;
2. Adjustment to "service" requirements to allow for service via fax for documents not exceeding 25 pages (without consent) or in any other manner, with consent, including via email;
3. Consideration is being given to deleting "evidence in reply" (s. 43 of the Regulations) altogether and to instead offer the parties to simply file additional evidence by seeking Leave of the Registrar, where necessary;
4. The TMOB is considering imposing a three-month window to complete cross-examination and requiring that the parties file evidence sequentially prior to opening the cross-examination period.  While this initiative is laudable (particularly when considering the impact of delays resulting from the cross-examination process and the current practice of requiring the parties to file evidence regardless of an ongoing cross-examination process), the truncated timelines are likely too abbreviated to accommodate business realities including foreign applicants and/or instructing principals, translation requirements, etc.
5. Additional clarity may be introduced to expressly require that a party cross-examining a witness must file transcripts (as is currently the case), however, the party being examined will be required to file undertakings within a prescribed timeframe.  Current requirements were somewhat unclear in this respect (i.e. placing the onus upon the cross-examining party) and thus it is expected that such a change will be well received.
6. The TMOB is seeking comment as to whether they can do away with the current practice of providing the parties with a written notice imposing deadlines to file Written Argument.  Instead, the TMOB is suggesting that a prescribed timeframe may be appropriate to more efficiently process opposition matters.  While the intent appears appropriate, the current notice is often received by or on behalf of Applicants and Opponents as a confirmation that the evidence period is closed.  Indeed, without such notice a party may prepare submissions based upon incomplete evidence.  Accordingly, the TMOB is considering offering the parties an opportunity to file "additional written arguments".  To the extent that the overall objective is to avoid administrative delay, introducing this additional step may not only result in confusion (i.e. as a departure from current practice) but may, in fact create additional administrative work for the TMOB.  Moreover, in view of the likelihood of administrative errors during any transition toward such a procedural change (i.e. missing deadlines), and the consequence of such errors (i.e. deemed abandonment), combined with a general lack of a reasonable a "curative" process to resolve technical or administrative errors, it would be appropriate for the TMOB and Trade-marks Branch to consider the introduction of such a curative process.  
7. Transitional provisions are being proposed to avoid the current dual system of opposition deadlines.  In view of the many positive changes to timelines, this suggestion will likely be well received.
8. Lastly, several miscellaneous matters are being considered to clarify the Regulations and modernize filing requirements.  The Trade-marks Branch has not offered specificity on all of the revisions under consideration and thus the Consultation Period will afford interested parties to offer suggestions to improve the application and opposition process.

Overall, many of the proposals outlined are positive and will certainly modernize the opposition process while recognizing the benefits to enabling usage of "modern" technologies for communications between the parties.  Nevertheless, offering a clear "curative" process (i.e. separate and apart from Leave of the Registrar) to address administrative errors may ease the implementation period - particularly where the consequence of a failure to file may result in the deemed abandonment of an application or opposition.

• Email This
• Print
• Comments
• Trackbacks
• Share Link

• Email This
• Print
• Comments
• Trackbacks
• Share Link

The Trade-marks Branch announced a consultation period (expiring June 26, 2010) to address two issues:

(1)  Priority Claims (s. 34):  The Trade-marks Branch has suggested that an applicant referencing a priority claim that wishes to restrict its reference to only certain wares and/or services may do so within the six month priority period but that such restriction cannot be removed subsequent to that timeframe.  Comments:  Since current practice does not require that an applicant identify the wares and/or services in reespect of which priority is claimed, the introduction of this new requirement may only complicate trademark prosecutions without offering significant value to trademark applicants or registrants.

(2)  Application and Use Abroad Claims (s.16(2)):  This proposal by and large recycles a previous proposal of the Trade-marks Branch along with a refinement in response to the a consultation period last fall.  Specifically, the proposal states that where an application is otherwise in order for approval for advertisement but contains an incomplete 16(2) claim (i.e. a claim referencing Registration and Use Abroad that does not reference a registration No. or a jurisdiction in which "use" has taken place), the application will proceed to advertisement in the Trade-marks Journal without the s.16(2) (Registration and Use Abroad) Claim.  However, an Applicant may have an opportunity to complete the claim at any point prior to the decision of the Registrar to advertise the application.   Comments:  While the refinement from the previous proposal is a positive development it is unclear what is meant by "prior to the decision of the Registrar".  For example, if the "decision of the Registrar" is the notice of approval, does this suggest that the Applicant must anticipate such approval, or can this amendment to the application be made at any point prior to the advertisement of the trademark?  Since the consequence of denying a s.16(2) claim will require submission of a Declaration of Use (thereby potentially delaying registration for years), there is perhaps very little advantage to the Trade-marks Branch which would simply be required to send repeated correspondence post-allowance rather than pre-advertisement.  At the same time, the consequence to Applicants (and perhaps to their Agents) should require that the Trade-marks Branch provide clarification to the date of the "decision of the Registrar".

• Email This
• Print
• Comments
• Trackbacks
• Share Link

In a follow up to an earlier post, the Canadian Trademarks Opposition Board ("TMOB") has enabled e-services to file Statements of Opposition and to submit requests for extensions of time.  In each case, these submissions can be made by following this link and selecting from the available "E-Services". 

The TMOB has suggested that this approach will allow for faster processsing of documents and immediate confirmation that submissions have been received while providing assurance that prescribed fees have been paid in full at the time of filing.  Hopefully this is only the first step in modernize workflows at the Trademarks Branch and TMOB and we will soon have the ability to file Counter-Statements, evidentiary submissions and written arguments in the same manner while also providing electronic access to the complete record of files as is the case at the United States Patent and Trademark Office (see Trademark Trial and Appeal Board).

• Email This
• Print
• Comments
• Trackbacks
• Share Link

Responding to pressure from Facebook users, privacy advocates and government representatives worldwide (including a report from Canada's Office of the Privacy Commissioner), as well as a growing campaign culminating in today's "Quit Facebook Day" campaign, (started by Canadians Joseph Dee and Matthew Milan), Facebook Inc. has announced changes to allow for simplified  privacy controls by its users. 

There are three central aspects to the new privacy changes (see Facebook explanation here):

(1) users can now control their privacy with just one setting thereby allowing users to quickly and simply control who can access their shared information;

(2) Facebook reduced the amount of information that a user must share in order to have an account. Now only your name, profile picture, gender, and networks must be public.

(3) users now have the ability to control which third party applications can access their personal information.

While most commentators suggest this is certainly a step in the right direction, further changes are probably required.  One potential problem is that users cannot prevent others from tagging them in photos. These changes do not address Facebook’s collection and use of user’s personal information for behavioural advertising purposes. Activists still argue for increased regulatory oversight to protect user’s private information on social networking platforms. Facebook appears to be a litmus test for how privacy will be regulated in the future, so other industry players are certainly watching closely. 

For further discussion on the privacy issues as they relate to privacy and Facebook, see:  The Globe & Mail and the recent opinion piece and excellent summary on this issue by Ian Kerr in the Ottawa Citizen appropriately entitled "The Devil is in the Defaults".  For additional information regarding Facebook Inc. CEO Mark Zuckerberg's own opinion piece in The Washington Post entitled "From Facebook, answering privacy concerns with new settings".  CBC radio host Nora Young discussed these developments with Debbie Frost, Facebook's Director of International Communications and Public Policy on her program Spark which has a podcast from the May 28, 2010 episode.

Many thanks to the contributions of Scott Masson, student-at-law, MacPherson Leslie & Tyerman LLP

• Email This
• Print
• Comments
• Trackbacks
• Share Link

 The Canadian Patent Office has announced an initiative to enable expedited prosecution of patent applications related to green technology. Under this proposed initiative, the current Patent Rules would be amended to grant advanced examination for such applications, with no additional fee.

To be granted access to the expedited examination service, a patent applicant would be required to submit a declaration stating that their application relates to technology that could help resolve or mitigate environmental impacts or conserve the natural environment and resources, if commercialized. Within two months of receiving a request for expedited prosecution under the new Rules along with the declaration, the Patent Office is expected to produce a substantive office action within two months. The applicant's time to respond to this office action will subsequently be shortened from the standard 6-month period, to a 3-month period.

It is hoped that these amendments to the Rules will foster investment and expedite commercialization of technology that will support the development of a clean energy economy.

This proposal will be recommended for publication for a 30-day consultation period in the Canada Gazette, Part I in fall of '10. At this time, it will be open for submissions relating to the proposal.

More information on this new initiative can be found on the CIPO website.

• Email This
• Print
• Comments
• Trackbacks
• Share Link

On April 29, 2010, the Trademarks Branch and Trademarks Opposition Board introduced a new online feature called "Work in Progress" which provide notice of various office initiatives to allow for public input in the policy development process.

Currently, these policy review initiatives include potential changes to the Examination Manual, updates to the Trade-marks Regulations to allow changes to trademark opposition practice (including the electronic filing of evidence!), and to clarify the current Practice Notice  on Opposition Proceedings as it relates to cross-examination.  Readers are encouraged to monitor the "Work in Progress" since each review process involves restricted time periods for input.

• Email This
• Print
• Comments
• Trackbacks
• Share Link

The Canadian Trade-marks Opposition Board ("TMOB") recently announced the introduction of e-services to enable the filing of Statements of Opposition and Extensions of time on-line.  It is anticipated that further developments to allow for e-services will be introduced in coming months.

In anticipation of this change, the TMOB will be hosting a webinar and live interactive presentation (at the Gatineau, Quebec offices) on Wednesday, May 12, 2010 to demonstrate the e-service. 

• Email This
• Print
• Comments
• Trackbacks
• Share Link

Canada's chief electoral officer granted The Pirate Party of Canada "party" status provided that they nominate a candidate in the next election.

Modelled after Sweden's Pirate Party, the Pirate Party of Canada's founders have an agenda focussed upon issues of patent reform (i.e. to ban patents on software, life forms, etc.), net neutrality, digital sovereignty, privacy protections (i.e. to cover an individual's digital data and information), but are perhaps best known for their positions with respect to copyright - specifically demands to allow for the free and legal download and use of songs, books, movies, etc. for any non-commercial use.  In light of the anticipated introduction of a new bill to amend the Copyright Act, running a candidate in the next Federal election may help to enlarge the profile of copyright and IP -related issues and the long-overdue update to existing legislation in the same way that the Green Party's involvement in the last election's televised debates focussed greater attention upon environmental issues.

• Email This
• Print
• Comments
• Trackbacks
• Share Link