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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New Practice Notice for Extensions of Time in Examination

Posted on January 12, 2010 by Josh MacFadden

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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Changes Announced to Canadian Trademark Opposition Process

Posted on February 24, 2009 by Josh MacFadden

A Practice Notice , entitled, "Practice in Trade-mark Opposition Proceedings" has recently been issued by the Canadian Trade-marks Opposition Board to introduce procedural changes and guidance concerning the granting of extensions of time.

Effective March 31, 2009, the Practice Notice* will replace the October 1, 2007 Practice Notice entitled "Procedure before the Trade-marks Opposition board as of October 1, 2007" and is intended to:

  • Simplify and clarify the Registrar's benchmarks for granting extensions of time including guidance with respect to qualifying "exceptional circumstances" for the purposes of obtaining an extension of time;
  • Encourage the parties to pursue settlement and mediation early in the opposition proceeding including the introduction of "Cooling Off Periods" whereby either party may request an extension of time of no more than nine (9) months on consent for the purpose(s) of negotiating settlement , mediation, and/or co-existence between the parties; and
  • Introduce a new practice with respect to the scheduling of hearings.

The introduction of these changes has resulted from consultation among the Trademarks Office, applicants and practitioners and, as a result, is expected to  better accommodate time line and other requirements for the parties involved in opposition while providing greater certainty for those seeking to extend opposition deadlines.

*Notably, trademark applications advertised prior to October 1, 2007 will remain subject to the Trade-marks Regulations as they read as of September 30, 2007.

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