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") 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 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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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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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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