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

IP is an asset of every business and indeed, may be the most valuable assets of a business.  Such assets include brand names, logos, slogans, domain names, software code, literary works, inventions, confidential information and trade secrets (i.e. everything from your customer list to your corporate logo).

For many businesses IP may be unprotected, under-exploited, or vulnerable to theft or infringement by third parties thereby reducing the potential competitiveness of a business and opportunities for growth.   Any individual or organization which invests in innovation fails to capture and exploit the true value of that investment if IP rights are not protected, commercialized and enforced.  Moreover, to the extent that a third party’s IP (i.e. software) is being used in conducting business, it is essential to know what your rights and obligations are to any such third party to ensure you are not violating the rights of third parties.

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Katie Thomas of The New York Times recently wrote an article on professional athletes seeking to obtain trademark protection as a means of both protecting their personal brand and capitalizing on their fame.

A quick review of the USPTO and CIPO databases reveals trademark applications and registrations for names, slogans and catch phrases for such athletes as Chad Ochocinco (Logo), Terrell Owens ("I LOVE ME SOME ME", The TO Design, and "GETCHA POPCORN READY"), and Darrelle Revis' trademark "REVIS ISLAND" while certain sponsors such as Nike International Ltd. protect the brands associated with their own athletes (i.e. LEBRON and the Lebron Design).

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The Canadian Intellectual Property Office ("CIPO") has announced that amendments to the Patent Rules will come into force on October 1, 2010.  The amendments, first published in the Canada Gazette Part II on December 9, 2009 include:

1.  simplification of the definition of the term "description";
2. clarifying the purpose of section 16(4);
3. consolidation of provisions that address the establishment of a filing date;
4. clarity regarding the confidential period;
5. amending maintenance fee references to the Patent Act;
6. updating the definition of "small entity";
7. clarifying Form 3 of Schedule I; and
8. simplifying completion requirements.

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On September 2, 2010 the Canadian Intellectual Property Office ("CIPO") issued a Practice Notice to provide guidance on the use and interpretation of (Paris Convention) priority claims in accordance with the Trade-marks Act (the "Act").

Priority claims, which are available within six (6) months of the after the date on which the earliest application was filed for registration of the same or substantially the same trademark for use with the same kind of wares or services (the "Priority Period"), allow trademark applicants to essentially 'back date' the date of subsequent filings to the date upon which the original application was filed.  Claims for priority may be submitted in the following ways:

1.  including the claim in an application at filing within the Priority Period;

2.  by amending a previously filed application to include the claim, provided the amendment is submitted within the Priority Period; or

3. by filing a separate declaration in respect of an application within the Priority Period.

A priority claim must reference the date of, and country where, the initial application was filed and, where an error has been made an Applicant may only correct those claims within the Priority Period.  The Trade-marks Branch has indicated that a priority claim need not include the application number in the priority claim - however, such applicants may be required to provide a certified copy of the earlier application.  If an error has been made in the application number referencing the earlier filed application, the Trade-marks Branch has indicated that the number may be corrected at any time before registration.

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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".

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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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 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.

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The Canadian Intellectual Property Office (the "CIPO") is seeking public comment on the availability of additional information concerning the Industrial Designs Register. 

At present, information concerning industrial design cases available via the CIPO website is restricted to basic information relating to registered cases (i.e. registration no., title, owner, etc.).  Accordingly, as an initiative to modernize service delivery the Industrial Design Office is considering offering additional information via the website.  Specifically, the CIPO has requested that interested parties advise as to:

• what information about industrial designs do you consider useful and/or necessary to have access to in order to conduct business? Why?; and
• whether the information that is made open to public inspection should relate only to registered industrial designs, or also to industrial designs prior to registration?  Why?

The deadline to respond to this request for input is April 19, 2010 by email to the attention of Rita Carreau at: Dessins-Industriels-Industrial-Designs@ic.gc.ca, by fax at 819-953-CIPO (819-953-2476), or by regular mail.

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The Canadian Intellectual Property Office  (the "CIPO") has published a Practice Notice effective March 11, 2010 which outlines new policies and practices concerning extensions of time during the examination of trademark and industrial design applications.

Specifically, the Trademarks Office and Industrial Design Office will provide Applicants with one (1) extension of time up to a maximum of six (6) months to file a complete response to an Examiner's Report.  If a proper response is not filed by the extended deadline the application will go into default (thereby imposing a final, non-extendable deadline). 

If, however, an Applicant requires additional time to prepare and file a response, an additional extension will be granted if "exceptional circumstances" are provided to the Examiner which justifies the need for further time.  The CIPO has provided the following examples of "exceptional circumstances" which may justify a further extension of time:

1. a recent change in Trade-mark Agent;
2. circumstances beyond the control of the person concerned (i.e. illness, accident, death, bankruptcy or other unforeseen or serious circumstances);
3. a  very recent assignment of the trade-mark;
4. where a certified copy of a foreign registration certificate has been requested by the Examiner but not yet filed because the foreign application has not registered;
5. where the applicant is negotiating for a consent from the holder of an official mark; or
6. if the cited co-pending and confusing mark may be going abandoned; is subject of opposition proceedings initiated by the Applicant; or where a cited registration is the subject of a section 45 proceeding initiated by the Applicant. 

Notably, the above-mentioned list is not exhaustive and does provide a measure of flexibility for examiners to exercise some discretion in granting additional time.  Nevertheless, the Practice Notice vaguely references a "recent" change or assignment of the mark (1 and 2 above) while seeming to suggest that the Applicant must also be the party that initiates opposition or a section 45 proceeding against a cited mark (this latter requirement is perplexing since it is the outcome of that proceeding which is relevant to the prosecution rather than the parties to the opposition/section 45 proceeding).

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The Canadian Intellectual Property Office ("CIPO") has announced that it has entered into further Patent Prosecution Highway ("PPH") pilot initiatives with their counterparts in Japan, Denmark and Korea. 

Similar to the approach initiated between Canada and the United States in January, 2008, the PPH concept is intended to result in faster, more efficient patent examination by allowing patent offices to share work previously done by another country's patent office.  During the trial period Applicants may request expedited examination under the PPH program free of charge (i.e. the Patent Rules, Schedule II fees will continue to apply).

The PPH trial period with the Japan Patent Office, Danish Patent and Trademark Office and Korean Intellectual Property Office (which commenced October 1, 2009) extends to September 30, 2011 with possible extensions available.  (Incidentally, the PPH trial period with the United States has been extended to January 28, 2011)

Additional information regarding the PPH programs and the process to make a PPH request is available on the CIPO website.

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