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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Trademarks Office Releases An Updated Wares and Services Manual

Posted on October 6, 2009 by Josh MacFadden

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.

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 following three-part test will be considered in this determination:

  1. Are the wares or services sufficiently specific so that it is possible to assess whether paragraph 12(1)(b) of the Trade-marks Act applies?  A mark that clearly describes a character or quality of the wares or services is not registrable.
  2. Are the wares or services sufficiently specific so that it is possible to assess confusion?  A mark that is confusingly similar to a registered trade-mark or a pending trade-mark is not registrable.
  3. Are the wares or services sufficiently specific to ensure that the applicant will not have an unreasonably wide ambit of protection?  For example, wares described as "computer software", without further specification, would give the applicant an unreasonably wide range of protection.

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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Consultation Period Opens Re. "Use and Registration Abroad" Claims

Posted on September 30, 2009 by Josh MacFadden

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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Consultation Period Opens for Extensions of Time in Examination

Posted on September 30, 2009 by Josh MacFadden

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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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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