Consultation Period Announced Re. Priority Claims and Registration and Use Abroad

Posted on June 1, 2010 by Josh MacFadden

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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Trademarks Office Consultation Period Opens on Three Topics

Posted on April 21, 2010 by Josh MacFadden

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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Consultation Period Opens Regarding the Timber Marking Act and Rules

Posted on December 9, 2009 by Josh MacFadden

The Copyright and Industrial Design Branch announced a consultation period (expiring January 8, 2010) to consider the repeal of the Timber Marking Act  (R.S., 1985, c. T-11) and Rules.  Never heard of the Timber Marking Act? You're not alone, however, CIPO has provided some helpful background information concerning the former utility of this legislation along with comment on current industry practice.

Essentially, the legislation was designed to protect a logging company's interest in timber floated to mills on inland waters in Quebec, Ontario and New Brunswick (see The National Film Board classic "Log Driver's Waltz").  The logs were marked upstream and sent down for processing in exchange for payment to the owner of the mark.  However, the practice of log drives has been replaced over time with truck and rail transport for a variety of reasons.  Consequently, industry practice has evolved to avoid marking individual logs and thus the current legislation is simply outdated.  

CIPO is soliciting comment from both stakeholders and owners of timber mark rights during the consultation period to consider the impact upon the parties and industry.  Nevertheless, the repeal of the Act and Rules would thus cease any further registration of timber marks and perhaps any existing rights previously granted under the Act.

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Consultation Period Opens Regarding the Timber Marking Act and Rules

Posted on December 9, 2009 by Josh MacFadden

The Copyright and Industrial Design Branch announced a consultation period (expiring January 8, 2010) to consider the repeal of the Timber Marking Act  (R.S., 1985, c. T-11) and Rules.  Never heard of the Timber Marking Act? You're not alone, however, CIPO has provided some helpful background information concerning the former utility of this legislation along with comment on current industry practice.

Essentially, the legislation was designed to protect a logging company's interest in timber floated to mills on inland waters in Quebec, Ontario and New Brunswick (see The National Film Board classic "Log Driver's Waltz").  The logs were marked upstream and sent down for processing in exchange for payment to the owner of the mark.  However, the practice of log drives has been replaced over time with truck and rail transport for a variety of reasons.  Consequently, industry practice has evolved to avoid marking individual logs and thus the current legislation is simply outdated.  

CIPO is soliciting comment from both stakeholders and owners of timber mark rights during the consultation period to consider the impact upon the parties and industry.  Nevertheless, the repeal of the Act and Rules would thus cease any further registration of timber marks and perhaps any existing rights previously granted under the Act.

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Consultation Period Opens Regarding the Timber Marking Act and Rules

Posted on December 9, 2009 by Josh MacFadden

The Copyright and Industrial Design Branch announced a consultation period (expiring January 8, 2010) to consider the repeal of the Timber Marking Act  (R.S., 1985, c. T-11) and Rules.  Never heard of the Timber Marking Act? You're not alone, however, CIPO has provided some helpful background information concerning the former utility of this legislation along with comment on current industry practice.

Essentially, the legislation was designed to protect a logging company's interest in timber floated to mills on inland waters in Quebec, Ontario and New Brunswick (see The National Film Board classic "Log Driver's Waltz").  The logs were marked upstream and sent down for processing in exchange for payment to the owner of the mark.  However, the practice of log drives has been replaced over time with truck and rail transport for a variety of reasons.  Consequently, industry practice has evolved to avoid marking individual logs and thus the current legislation is simply outdated.  

CIPO is soliciting comment from both stakeholders and owners of timber mark rights during the consultation period to consider the impact upon the parties and industry.  Nevertheless, the repeal of the Act and Rules would thus cease any further registration of timber marks and perhaps any existing rights previously granted under the Act.

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Changes to Canadian Trademark Examination Process

Posted on June 25, 2009 by Josh MacFadden

Following up on an earlier post, the Canadian Trade-marks Office has announced changes to the examination of trademark applications. 

Effective June 17, 2009 the time allowed to respond to Examiner's Report is now six (6) months (from the previous four months).  Notably, however, this change will not impact deadlines imposed prior to June 17, 2009 (i.e. for Examiner's Reports issued prior to that date) and thus it will be important to carefully diarize any outstanding deadlines to reflect this change.

Additionally, the Trade-marks Office has announced that it will no longer issue "courtesy letters" to applicants to advise regarding co-pending and potentially confusing applications with a later filing date.

You may also recall that the Trade-marks Office was soliciting input regarding a third policy, namely a proposal to no longer impose a deadline for a Requesting Party to respond to correspondence relating to Changes in Title.  At this time there has been no formal announcement concerning the introduction of this policy.

In addition to changes noted above, the Canadian Intellectual Property Office has commenced a consultation period expiring September 14, 2009 to consider enabling clients (for patents, trademarks, industrial design, copyright and integrated circuit topography applications) to file correspondence and obtain filing dates on Saturdays, Sunday and holidays - while still maintaining the current time extensions for deadlines.  To applicants filing submissions or applications on those days formerly known as a day off this may represent a positive development to provide an earlier filing date than that which is currently available.  Nevertheless, to others this may simply represent a further worrisome encroachment on an employee's family or free time in a manner continuing along the trend of 24/7 accessibility in the age of handheld email devices.

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Changes to Canadian Trademark Examination Process

Posted on June 25, 2009 by Josh MacFadden

Following up on an earlier post, the Canadian Trade-marks Office has announced changes to the examination of trademark applications. 

Effective June 17, 2009 the time allowed to respond to Examiner's Report is now six (6) months (from the previous four months).  Notably, however, this change will not impact deadlines imposed prior to June 17, 2009 (i.e. for Examiner's Reports issued prior to that date) and thus it will be important to carefully diarize any outstanding deadlines to reflect this change.

Additionally, the Trade-marks Office has announced that it will no longer issue "courtesy letters" to applicants to advise regarding co-pending and potentially confusing applications with a later filing date.

You may also recall that the Trade-marks Office was soliciting input regarding a third policy, namely a proposal to no longer impose a deadline for a Requesting Party to respond to correspondence relating to Changes in Title.  At this time there has been no formal announcement concerning the introduction of this policy.

In addition to changes noted above, the Canadian Intellectual Property Office has commenced a consultation period expiring September 14, 2009 to consider enabling clients (for patents, trademarks, industrial design, copyright and integrated circuit topography applications) to file correspondence and obtain filing dates on Saturdays, Sunday and holidays - while still maintaining the current time extensions for deadlines.  To applicants filing submissions or applications on those days formerly known as a day off this may represent a positive development to provide an earlier filing date than that which is currently available.  Nevertheless, to others this may simply represent a further worrisome encroachment on an employee's family or free time in a manner continuing along the trend of 24/7 accessibility in the age of handheld email devices.

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