Today the Trademarks Opposition Board ("TMOB") announced a consultation period from June 28th to September 20, 2010.  The amendments, largely intended to streamline the opposition process and communications between the parties and the TMOB, include:

1. The potential for electronic transmission of evidence, provided that the submitting party maintain originals for a prescribed timeframe;
2. Adjustment to "service" requirements to allow for service via fax for documents not exceeding 25 pages (without consent) or in any other manner, with consent, including via email;
3. Consideration is being given to deleting "evidence in reply" (s. 43 of the Regulations) altogether and to instead offer the parties to simply file additional evidence by seeking Leave of the Registrar, where necessary;
4. The TMOB is considering imposing a three-month window to complete cross-examination and requiring that the parties file evidence sequentially prior to opening the cross-examination period.  While this initiative is laudable (particularly when considering the impact of delays resulting from the cross-examination process and the current practice of requiring the parties to file evidence regardless of an ongoing cross-examination process), the truncated timelines are likely too abbreviated to accommodate business realities including foreign applicants and/or instructing principals, translation requirements, etc.
5. Additional clarity may be introduced to expressly require that a party cross-examining a witness must file transcripts (as is currently the case), however, the party being examined will be required to file undertakings within a prescribed timeframe.  Current requirements were somewhat unclear in this respect (i.e. placing the onus upon the cross-examining party) and thus it is expected that such a change will be well received.
6. The TMOB is seeking comment as to whether they can do away with the current practice of providing the parties with a written notice imposing deadlines to file Written Argument.  Instead, the TMOB is suggesting that a prescribed timeframe may be appropriate to more efficiently process opposition matters.  While the intent appears appropriate, the current notice is often received by or on behalf of Applicants and Opponents as a confirmation that the evidence period is closed.  Indeed, without such notice a party may prepare submissions based upon incomplete evidence.  Accordingly, the TMOB is considering offering the parties an opportunity to file "additional written arguments".  To the extent that the overall objective is to avoid administrative delay, introducing this additional step may not only result in confusion (i.e. as a departure from current practice) but may, in fact create additional administrative work for the TMOB.  Moreover, in view of the likelihood of administrative errors during any transition toward such a procedural change (i.e. missing deadlines), and the consequence of such errors (i.e. deemed abandonment), combined with a general lack of a reasonable a "curative" process to resolve technical or administrative errors, it would be appropriate for the TMOB and Trade-marks Branch to consider the introduction of such a curative process.  
7. Transitional provisions are being proposed to avoid the current dual system of opposition deadlines.  In view of the many positive changes to timelines, this suggestion will likely be well received.
8. Lastly, several miscellaneous matters are being considered to clarify the Regulations and modernize filing requirements.  The Trade-marks Branch has not offered specificity on all of the revisions under consideration and thus the Consultation Period will afford interested parties to offer suggestions to improve the application and opposition process.

Overall, many of the proposals outlined are positive and will certainly modernize the opposition process while recognizing the benefits to enabling usage of "modern" technologies for communications between the parties.  Nevertheless, offering a clear "curative" process (i.e. separate and apart from Leave of the Registrar) to address administrative errors may ease the implementation period - particularly where the consequence of a failure to file may result in the deemed abandonment of an application or opposition.

• Email This
• Print
• Comments
• Trackbacks
• Share Link

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".

• Email This
• Print
• Comments
• Trackbacks
• Share Link

In a follow up to an earlier post, the Canadian Trademarks Opposition Board ("TMOB") has enabled e-services to file Statements of Opposition and to submit requests for extensions of time.  In each case, these submissions can be made by following this link and selecting from the available "E-Services". 

The TMOB has suggested that this approach will allow for faster processsing of documents and immediate confirmation that submissions have been received while providing assurance that prescribed fees have been paid in full at the time of filing.  Hopefully this is only the first step in modernize workflows at the Trademarks Branch and TMOB and we will soon have the ability to file Counter-Statements, evidentiary submissions and written arguments in the same manner while also providing electronic access to the complete record of files as is the case at the United States Patent and Trademark Office (see Trademark Trial and Appeal Board).

• Email This
• Print
• Comments
• Trackbacks
• Share Link

The Canadian Trade-marks Opposition Board ("TMOB") recently announced the introduction of e-services to enable the filing of Statements of Opposition and Extensions of time on-line.  It is anticipated that further developments to allow for e-services will be introduced in coming months.

In anticipation of this change, the TMOB will be hosting a webinar and live interactive presentation (at the Gatineau, Quebec offices) on Wednesday, May 12, 2010 to demonstrate the e-service. 

• Email This
• Print
• Comments
• Trackbacks
• Share Link

• Email This
• Print
• Comments
• Trackbacks
• Share Link

On June 9, 2009 the well-known social networking site Facebook announced the introduction of a new policy to enable users to register personalized usernames as personal URLS in the form:  www.facebook.com/yourname, which will then link to the user's Facebook profile.  Additionally, those administering groups or other Facebook pages may similarly select their own URL for that page.  The initiative starts at 12:01 EDT on Saturday, June 13, 2009 for those whom have signed up with Facebook prior to May 31, 2009 or which have used a particular user profile prior to June 9, 2009.

Additionally, however, the introduction of this policy raises the potential for the adoption of personal URLs which may be confusingly similar or identical to trademarks and brand names thereby resulting in "Facebook squatting".  Anticipating this possibility and, in advance of the Saturday launch, Facebook Inc. has enabled trademark owners to use an on line form to register their trademarks with Facebook in order to prevent third parties from utilize a trademark as part of a URL. 

In order to mitigate against negative repercussions it is advisable that trademark owners register their marks with Facebook in order to avoid potential confusion or negative consequences such as diminished goodwill, it is recommended that you contact Facebook Inc. using the online form or contact our office to arrange for a recordal of your rights.

Should you wish to discuss the implications of this policy on your trademarks please contact us.

• Email This
• Print
• Comments
• Trackbacks
• Share Link

In a decision rendered January 22, 2009, just days before annual Robbie Burns' Day celebrations, the Federal Court of Appeal has upheld Glenora Distillery's trademark application for "GLEN BRETON"in association with "single malt whisky", reversing the earlier decision from the Federal Court.

Since the initial adoption of the trademark, the Scotch Whisky Association, which represents over 50 brands incorporating the word "Glen" in their whisky labelling,  has attempted to oppose the adoption of the mark on the basis of potential consumer confusion with the many "GLEN" branded Scotch whisky products emanating from Scotland.

An appeal to the Supreme Court of Canada is available but must be submitted within 60 days of the decision.  We will continue to monitor this case for further developments.

• Email This
• Print
• Comments
• Trackbacks
• Share Link

While it is generally advisable to seek the advice of an experienced trademark agent to consider registrability and risks of adopting a particular trademark, any individual, corporation, partnership, trade union or lawful association, (provided they satisfy the requirements of the Trade-marks Act and Trade-marks Regulations)[j1], may seek to register their trademark through filing an application for registration with the Trademarks Office and submitting the requisite fees.

Although the initial costs of seeking the advice of a trademark agent will exceed those associated with ‘going it alone’, obtaining such advice may prove invaluable in terms of assessing the registrability of a mark, the risks of adoption, and appropriately defining the scope of protection necessary for a particular business or to achieve a particular business objective. Nevertheless, whether pursuing a trademark registration with an agent or on your own, it is always advisable to review the requirements of the Canadian Trademarks Office by reviewing applicable legislation, reviewing the Trademarks Database and visiting the website of the Canadian Intellectual Property Office to review the Guide to Trademarks, the document entitled the “Application Process”. 

• Email This
• Print
• Comments
• Trackbacks
• Share Link