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

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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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 Intellectual Property Office ("CIPO") has announced a consultation period of October 1 to October 31, 2009 regarding a proposed Practice Notice which concerns the practice of granting extensions of time.

For applications undergoing examination the current practice permits Applicants to seek an extension of time by submitting a written request; however, the rules are unclear as to whether further requests (for an extension of time) will be granted.  In a proposal in line with proposed changes in other branches of CIPO, the proposed Practice Notice suggests that Examiners will grant one (1) extension of time of six (6) months and a failure to respond within the extension period will result in the abandonment of the case.

It remains unclear, however, whether an Examiner will have discretion to grant additional (i.e. successive) extensions of time in exceptional circumstances. 

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The Canadian Trademarks Office has announced a Consultation and Discussion Period expiring November 15, 2009 to review a Proposed Practice Notice intended to clarify the requirements for a complete section 16(2) (i.e. "Registration and Use Abroad") claim.

The proposal requires that a complete a section 16(2) claim by include:

• the particulars of the foreign application or registration of the trademark in or for the country of origin of the Applicant; and
• the name of a country in which the trademark has been used as of the date of filing in Canada

If an incomplete section 16(2) claim is included in an application but the case is otherwise in a position for advertisement, the application will proceed to advertisement in the Trade-marks Journal without the section 16(2) claim and without providing formal notice to the Applicant, save for the Approval Notice.  As readers know, a section 16(2) claim may not be added to the application subsequent to advertisement.

The Trademarks Office has indicated that an Applicant may add or complete a section 16(2) claim "prior to the decision of the Registrar to advertise the trademark".  (It is unclear, however, whether the "decision of the Registrar to advertise" in fact, refers to the actual advertisement of the mark or an arbitrary date prior to publication.)

The result of this proposal and particularly the immediate advertisement of the mark without completing the section 16(2) claim effectively denies the Applicant the present ability to complete the claim and to subsequently finalize the registration process based solely upon the section 16(2) claim(s) and thus such Applicants will be required to submit a Declaration of Use in circumstances where the Applicant has provided "proposed use" claims.

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The Canadian Trademarks Office has today announced the commencement of a consultation period to review proposed changes to the practice of granting extensions of time during the examination of trademark applications.

The Proposed Practice Notice outlines that Applicants will be generally be granted one (1) extension of time to a maximum of six (6) months to file a response to an Examiner's Report, if the request is justified.  And further, if the Applicant fails to provide a response or the if the reasons for requesting a further extension of time are not considered sufficient, the application will be subject to a default notice.

The Trademarks Office has offered no guidance as to what might be deemed a "justified" reason for requesting a further extension of time and thus it is unclear whether such issues as (a) the assignment of the trademark; (b) circumstances beyond the control of the Applicant (i.e. bankruptcy) or where an Applicant is: (c) seeking to investigate, cancel or acquire the rights of a cited applicant or registrant (which may take months or years); (d) awaiting the consent of a public authority (which may also take months or years); or (e) awaiting a certified copy of a foreign registration (i.e. where an application is based upon Application and Use Abroad) and/or such foreign application is in the midst of opposition. 

Since the consultation period expires on October 30, 2009 it is hoped that submissions to the Trademarks Office include requests for additional guidance or benchmarks as to the standards necessary to satisfy the requirement for a "justified" reason for a further extension of time such as those outlined above.

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The Canadian Intellectual Property Office has opened up consultation to proposed changes to the trademark application process including:

1. providing Applicants with six (6) months to respond to Examiner's Reports rather than the current four (4) months;
2. no longer imposing a deadline for a Requesting Party to respond to correspondence relating to Changes in Title; and
3. No longer issuing courtesy letters to Applicants to inform about co-pending and confusing applications that have a later entitlement date.

While the first two proposals will likely result in fewer requests for extensions of time and a more realistic time line for Applicants and their representatives, an open-ended Change in Title request may result in some uncertainty with respect to the ownership of trademark applications and registrations.  Nevertheless, trademark owners would be well advised to expedite title transfers in order to perfect their ownership for the purpose of notifying the public, competitors and consumers regarding the source of products and services.  In terms of the third proposal, it is unlikely that many trademark agents and lawyers would rely upon such courtesy letters to monitor the Trade-marks Register since they have been discretionary and somewhat inconsistently disseminated.  Nevertheless, improving upon the delivery of such letters is likely resource prohibitive for the Trademarks Office and with the multiple automated trademark search and watch services available the continued delivery of such courtesy letters unnecessarily exposes the Trademarks Office to liability for failure to provide notice in some instances.  Overall, the proposed changes are likely to enhance service by reducing requests for extension of time and the inconsistent provision of courtesy letters thereby potentially improving the administration of trademark applications, registrations and title transfers.

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Once an application has been filed and processed within the Trademarks Office, the application is assigned a filing date and application number and posted on the Trademarks Register. Shortly thereafter, the application file is transferred to the attention of a Trademarks Examiner in order to assess the registrability of the application pursuant to Canadian legislation. The following general registrability criteria, among others, must be satisfied in order for an application to be registrable in Canada: [1]

• The proposed trademark, whether depicted, written or sounded, must not be descriptive or deceptively misdescriptive of the wares and/or services offered in association with the trademark or of the conditions of, or the persons employed in, their production or place of origin;
• The name, in any language, of any of the wares or services in connection with which it is used or proposed to be used;
• Confusing with a registered trademark;
• The mark must not be offend the section 9 or 10 rights of third parties (i.e. owners of Official Marks) or be prohibited by section 10(1) (i.e. must not be a denomination used to designate a plant variety pursuant to the Plant Breeders’ Rights Act);
• The trademark must not be a generic term; and
• The proposed trademark must not be “scandalous, obscene or immoral

In addition to the foregoing, the Trade-marks Act and the Olympic and Paralympic Marks Act outline further criteria and requirements for restricting the registrability of certain marks. Following examination (i.e. once registrability requirements are satisfied), an application is Approved and published in one issue of the Trade-marks Journal, thereby triggering the two month opposition period within which time any interested party may seek to oppose the allowance of your application for reasons such as pre-existing trademark rights. In the event that the application is unopposed, an Applicant does not receive notification until the Notice of Allowance is received, outlining the remaining requirements to register the trademark application. On the other hand, if opposition is encountered, the Trade-marks Opposition Board (TMOB) will provide notification and advise regarding the procedural requirements for responding to the opposition. Notably, a failure to respond to an opposition will result in the application being deemed abandoned by the applicant.

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