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.

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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).

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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.

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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. 

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Today the Trademarks Office announced the release of a newly revised and updated Wares and Services Manual to clarify requirements and policies for the description of the products and services in Canadian trademark applications.  The Trademarks Office has additionally provided a three-part test for assessing the sufficiency of a wares and services description for the purpose of satisfying section 30(a) of the Trade-marks Act (i.e. the wares and services must be described in ordinary commercial terms).

The revisions also clarify office policies regarding terminology which generally necessitates that an Applicant provide greater specificity prior to Approval (i.e. will prompt a request for further clarification):  "parts and fittings", accessories, equipment, apparatus, computer software, systems, products, discs and pre-recorded media, nutritional supplements, etc.

Lastly, whereas the current manual is in pdf form, the new manual has been introduced in electronic form only thereby enabling faster revision and policy releases following changes in policy, interpretation, new Practice Notices, etc.

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The Canadian Trade-marks Opposition Board ("TMOB") has issued a Practice Notice announcing changes to Section 45 Proceedings which will be made effective September 14, 2009. 

The Section 45 process is initiated at the request of any person seeking evidence that a mark which has been registered for at least three years, has indeed been used by or on behalf of the Registrant.  The process is intended to be a simple and expeditious process requiring that a Registrant submit, within three months of receipt of the Section 45 Notice, evidence of use of the trademark (or special circumstances excusing non-use) within the three (3) year period preceding the notice.  Underlying this process is a motivation to clear "dead wood" from the Register to remove those marks which are not "in use" by Registrants.  Nevertheless, over time the section 45 process has been less efficient for a variety of reasons including, for example, the unwillingness of unhurried non-using Registrant's to acknowledge a lack of evidence, successive requests for extensions of time to submit evidence, written arguments, etc.  Accordingly, the TMOB has sought to increase the efficiency of the process with the current announcement, which includes:

• limiting the number of extensions of time available to Registrants to one extension of up to four months;
• disallowing retroactive extensions of time to submit additional evidence after the Requesting Party has filed written submissions;
• increasing the time line for submitting written argument to four months from the current two, with no extensions of time available; and
• providing additional certainty for the scheduling and re-scheduling of oral hearings

Additionally, the TMOB has clarified policies concerning both the Registrar's discretion to issue a Section 45 Notice and guidance with respect to those exceptional circumstances which may excuse a Registrant's non-use of the trademark.

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Continuing on an earlier story, the Supreme Court of Canada today dismissed the request for leave filed by the Scotch Whisky Association application to review the issue of confusion and the applicability of section 10 of the Trade-marks Act.

Glenora Distillers International Ltd. had sought to register the trademark GLEN BRETON in association with single malt whisky and the application was subsequently opposed by the Scotch Whisky Association, which took exception to the use of a "Glen" prefix in association with whiskies not distilled and/or originating from Scotland.  While the Trade-marks Opposition Board rejected those arguments resulting in an application for judicial review accompanied by new evidence on the issue of confusion regarding the use of the "Glen" prefix in association with Scotch whiskies.  In the result, the Federal Court directed the Registrar of Trade-marks to refuse the application - a decision which was later reversed by the Federal Court of Appeal.  In light of today's decision the GLEN BRETON trademark application is now in a position for Allowance and subsequent registration in the Canadian Trademarks Office.

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A Practice Notice , entitled, "Practice in Trade-mark Opposition Proceedings" has recently been issued by the Canadian Trade-marks Opposition Board to introduce procedural changes and guidance concerning the granting of extensions of time.

Effective March 31, 2009, the Practice Notice* will replace the October 1, 2007 Practice Notice entitled "Procedure before the Trade-marks Opposition board as of October 1, 2007" and is intended to:

• Simplify and clarify the Registrar's benchmarks for granting extensions of time including guidance with respect to qualifying "exceptional circumstances" for the purposes of obtaining an extension of time;
• Encourage the parties to pursue settlement and mediation early in the opposition proceeding including the introduction of "Cooling Off Periods" whereby either party may request an extension of time of no more than nine (9) months on consent for the purpose(s) of negotiating settlement , mediation, and/or co-existence between the parties; and
• Introduce a new practice with respect to the scheduling of hearings.

The introduction of these changes has resulted from consultation among the Trademarks Office, applicants and practitioners and, as a result, is expected to  better accommodate time line and other requirements for the parties involved in opposition while providing greater certainty for those seeking to extend opposition deadlines.

*Notably, trademark applications advertised prior to October 1, 2007 will remain subject to the Trade-marks Regulations as they read as of September 30, 2007.

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In a decision rendered January 22, 2009, just days before annual Robbie Burns' Day celebrations, the Federal Court of Appeal has upheld Glenora Distillery's trademark application for "GLEN BRETON"in association with "single malt whisky", reversing the earlier decision from the Federal Court.

Since the initial adoption of the trademark, the Scotch Whisky Association, which represents over 50 brands incorporating the word "Glen" in their whisky labelling,  has attempted to oppose the adoption of the mark on the basis of potential consumer confusion with the many "GLEN" branded Scotch whisky products emanating from Scotland.

An appeal to the Supreme Court of Canada is available but must be submitted within 60 days of the decision.  We will continue to monitor this case for further developments.

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The Canadian Intellectual Property Office ("CIPO") is presently seeking input regarding proposed changes to Section 45 Proceedings (i.e. Canada's "use it or lose it" provision of the Trade-marks Act (the "Act")). 

Currently, Section 45 of the Act provides a summary procedure whereby a party may request that the Registrar of Trademarks issue a Section 45 Notice requiring that the registered owner of a trademark submit, within three months, evidence of use of the mark for the three year period preceding the notice or evidence of special circumstances to excuse non-use.  If no special circumstances or evidence are filed or where such evidence is deficient, the registration may be amended or cancelled in its entirety.

Included within the suggested changes are:

1. proposals to permit the requesting party to seek a Section 45 Notice in respect of specific products and/or services rather than the entirety of those products and services listed in the registration;
2. proposed circumstances whereby the Registrar may elect not issue a Section 45 Notice which include:  (a) where the registration is currently the subject of a pending Section 45 proceeding; (b) where the Registrar determines that the request is merely frivolous or vexatious; and (c) where the request is made within three years from the date of a previous Section 45 decision;
3. restrictions to the number of extensions of time available to a registrant for the submission of evidence (i.e. limited to one extension of four months) while clarifying the circumstances which may justify an extension of time;
4. a proposal whereby the Registrar could simply elect to render a decision to cancel, amend or maintain a registration where the evidence "clearly" establishes or fails to establish use of the mark; and lastly,
5. it appears that requesting parties will no longer have the ability to withdraw the Section 45 request and thereby terminate the proceedings in circumstances where the parties are in negotiation.

The consultation period regarding the proposals ends on March 13, 2009 and thus any interested parties are encouraged to submit comment.  We will provide a subsequent post once feedback is published by the Trademarks Office.

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