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.

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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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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).

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On April 29, 2010, the Trademarks Branch and Trademarks Opposition Board introduced a new online feature called "Work in Progress" which provide notice of various office initiatives to allow for public input in the policy development process.

Currently, these policy review initiatives include potential changes to the Examination Manual, updates to the Trade-marks Regulations to allow changes to trademark opposition practice (including the electronic filing of evidence!), and to clarify the current Practice Notice  on Opposition Proceedings as it relates to cross-examination.  Readers are encouraged to monitor the "Work in Progress" since each review process involves restricted time periods for input.

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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. 

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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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On October 30, 2009, the Internet Corporation for Assigned Names and Numbers ("ICANN"), the non-profit corporation which administers and sets policies related to the Internet, domain names, etc., announced the roll-out of internationalized domain names (i.e. domain addresses utilizing non-Latin characters or non-ASCII scripts).

The first phase of the process will commence on November 16, 2009 to allow countries to apply to ICANN for country codes (such as ".ca") in a different character set (i.e. Cyrillic) and further roll-outs will follow in subsequent phases.  To monitor developments in this area please consult the web page developed by ICANN to post updates.

While certainly indicative of the global reach and utilization of the Internet, the incorporation of some 100,000 new character sets to the formerly A-Z format may result in challenges for current owners of domain name registrations (i.e. resulting in confusion between Latin and non-Latin domains) and may result in challenges to software programmers or users of software which are presently hard-coded to recognize only Latin domain addresses.  In either case, the phased roll-out is intended to mitigate substantial concerns in this regard, however, users of accented Latin characters may already be aware that certain software still does not support such usage. 

Notwithstanding the potential challenges of internationalized domains, this development presents great opportunities for brand owners to bolster their online presence and to increase brand recognition among all Internet users utilizing non-Latin characters.  At the same time, however, brand owners are cautioned to carefully monitor Internet activity in order to anticipate and/or resolve potential online confusion - particularly where a non-Latin character may effectively mimic Latin characters specifically to cause the re-direct of web traffic (i.e. to utilize the number "0" as opposed to a capital letter "O") to a competing or entirely unrelated website.

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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 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 Trade-marks Opposition Board ("TMOB") has issued a Practice Notice announcing changes to Section 45 Proceedings which will be made effective September 14, 2009. 

The Section 45 process is initiated at the request of any person seeking evidence that a mark which has been registered for at least three years, has indeed been used by or on behalf of the Registrant.  The process is intended to be a simple and expeditious process requiring that a Registrant submit, within three months of receipt of the Section 45 Notice, evidence of use of the trademark (or special circumstances excusing non-use) within the three (3) year period preceding the notice.  Underlying this process is a motivation to clear "dead wood" from the Register to remove those marks which are not "in use" by Registrants.  Nevertheless, over time the section 45 process has been less efficient for a variety of reasons including, for example, the unwillingness of unhurried non-using Registrant's to acknowledge a lack of evidence, successive requests for extensions of time to submit evidence, written arguments, etc.  Accordingly, the TMOB has sought to increase the efficiency of the process with the current announcement, which includes:

• limiting the number of extensions of time available to Registrants to one extension of up to four months;
• disallowing retroactive extensions of time to submit additional evidence after the Requesting Party has filed written submissions;
• increasing the time line for submitting written argument to four months from the current two, with no extensions of time available; and
• providing additional certainty for the scheduling and re-scheduling of oral hearings

Additionally, the TMOB has clarified policies concerning both the Registrar's discretion to issue a Section 45 Notice and guidance with respect to those exceptional circumstances which may excuse a Registrant's non-use of the trademark.

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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.

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In a further development of an earlier story relating to the Canadian Intellectual Property Office ("CIPO"), the United States Patent and Trademark Office ("USPTO") has now issued a warning to customers regarding unsolicited communication from third parties requesting fees for certain services.The USPTO invites recipients of unsolicited correspondence concerning your trademarks to contact the Federal Trade Commission ("FTC") where you receive correspondence from a party other than the USPTO or your agent requesting fees relating to your trademark applications and registrations.The USPTO warning is similar to the warning recently issued by the Canadian Intellectual Property Office ("CIPO") concerning such unsolicited correspondence.  If you receive such materials it is advisable to contact your agent and/or the Client Service Centre at 1-866-997-1936 (or at 819-934-0554 for international calls).

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Recently, the UK Intellectual Property Office issued a Press Release announcing Intellectual Property Agreements between the UK and China concerning trademarks and patents with the objective of encouraging applicants and/or businesses in each country to develop products and services from new innovations and ideas.

The Press Release indicates that Chinese companies currently file four times more patents than in 2004 and project such numbers to increase well into the future, including a forecast that, by 2012, China will generate the largest number of patent applications of any nation in the world.  

In view of current backlogs and delays in patent prosecutions, the patent agreements between the two nations are intended to:

• address backlogs by reducing duplication and delays in the processing of applications and enabling UK and Chinese patent examiners to "make better use of each others' work"; and
• promote the use and understanding of the respective Intellectual Property systems by Chinese and UK businesses.

The trademarks agreement is intended to enable cooperation between the UK Intellectual Property Office and the China Trade Mark Office, including facilitating exchanges of best practices and training.

To date, there have been no simlar announcements from Industry Canada or the Canadian Intellectual Property Office regarding efforts to better facilitate coordination, collaboration and/or increased efficiencies between CIPO and the China Patent & Trademark Office for the protection and exploitation of intellectual property within the two countries although this announcement certainly suggests such agreement could certainly be considered in order to advance the IP interests of businesses operating in both countries.

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Recently, the Canadian Intellectual Property Office ("CIPO") issued a warning on the Trademarks mainpage to advise regarding the receipt of non-solicited invoices. 

Typically, such "invoices" are correspondence disseminated to trademark applicants and/or registrants once their contact information has been published (i.e. on the CIPO online database or in the Trade-marks Journal) to request participation in or contribution to an upcoming online or print publication of trademarks.  Nevertheless, such correspondence is often confusingly similar to billing invoices and loaded with small print.  Consequently, many unwitting recipients may inadvertently submit payment for the service without necessarily appreciating the nature of the request or its potential utility for their business. 

The most prudent course of action to take when an unsolicited piece of correspondence is received (particularly when it appears as an 'invoice'), is to contact your agent and provide a copy of the material for review.  Alternatively, CIPO has advised that recipients may also contact the Client Service Centre at 1-866-997-1936 (or at 819-934-0554 for international calls) prior to responding to such correspondence.

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In addition to providing a full range of legal services to individuals, small businesses, governments, public agencies, and major national and international companies, MacPherson Leslie & Tyerman LLP provides full intellectual property agency services.  Our registered patent and trademark agents are able to represent domestic or international clients before the Canadian Intellectual Property Office and perform a complete range of court-related enforcement services. This saves clients the hassle of having to procure special enforcement services from an additional firm aside from the one providing the IP services. Their specialties include:

• Patent, Trademark, Copyright, and Industrial Design Prosecutions
• Intellectual Property portfolio management, due diligence, transactional analysis and opinion work
• Litigation involving Intellectual Property
• Software/e-commerce
• Intellectual Property Licensing
• Internet Domain Name Dispute Resolutions
• Preparation of Contracts Involving Intellectual Property
   

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