On April 20, 2010 the Trademarks Office announced a consultation period expiring May 20, 2010 to solicit feedback on the following proposals:
- the Registrar will generally no longer require confirmation that the applicant is a "person" within the meaning of Section 2 of the Trade-marks Act;
- clarification of the practice with respect to the description of colour claims; and
- expediting the deemed withdrawal or abandonment of an opposition or an application
Overall, it is clear that the overall objective here is to streamline the trademark examination and opposition processes; however, the latter proposal presents potential punitive consequences for actions which may, in fact, be inadvertent or erroneous on the part of the Trademarks Office, Trademarks Opposition Board, an applicant or its agent.
Dealing with each proposal in turn, the proposal concerning the requirement to confirm whether an applicant is a "person" essentially shifts the onus to the applicant or its agent to confirm compliance with the Act. Since an uninformed client may seek to register a mark by referencing a company name or incorporated entity that has not yet been registered resulting in the potential invalidity of an application/registration it will be essential that all applicants are sufficiently informed as to whether they, in fact, satisfy the section 2 definition ("person" includes any lawful trade union and any lawful association engaged in trade or business or the promotion thereof, and the administrative authority of any country, state, province, municipality or other organized administrative area).
The proposal concerning colour claims appears to anticipates the growing trend of protecting a particular colour as a trademark. The proposal requires a description of the colour(s) referencing the colours found in Rule 28 of the Trade-marks Regulations or, where the colour is not found in Rule 28, by describing the colour code and colour reference system for each colour comprising the trademark.
Lastly, the proposals with respect to trademark applications and oppositions each create presumptions resulting in the deemed abandonment of an application or deemed withdrawal of opposition. In each case such deemed abandonment provides no prior notice to the Applicant or Opponent which might enable curative or corrective action and thus without providing an accompanying ability to take corrective action prior or subsequent to deemed abandonment it is doubtful that these proposals will be well received. Indeed, the end result for applicants and opponents may simply involve re-visiting the application and/or opposition issues by filing a subsequent application and/or opposition.
In the proposal, an opposition as "abandoned" where an opponent does not submit its evidence or a statement that it does not wish to submit its evidence. Current practice provides an opponent with a notice to confirm whether the failure to make such submissions thereby permitting the ability to remedy the issue (i.e. with leave of the Registrar) whereas the current proposal results in an apparently immediate consequence. Without offering the ability to remedy for example, an inadvertent error or resolve a simple issue of mis-filing materials within the Trademarks Office.
Similarly, there is a further proposal to deem an application as "abandoned" for a failure to file a counter-statement, evidence or to advise that evidence will not be filed. Again, this approach will avoid the current practice of initially advising applicants of their failure to file (thereby enabling a potential corrective action) and thus presents a punitive consequence which may effectively require that an applicant re-file an application rather than seek leave of the registrar or a retroactive extension of time. The element of the proposal suggesting the deemed abandonment of a "proposed use" application for a failure to file a Declaration of Use is similarly punitive and appears to suggest the discontinuance of the practice of providing notice to an Applicant to take corrective action (i.e. seek a retroactive extension of time).
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