A Few Practical Tips to Avoid Infringing Third Party Rights

Be careful when copying material. Most material on the Internet (i.e. photos, logos, articles, etc.) is protected by copyright. Such material can only be used with the written consent of the owner (i.e. a license). The penalties of using content without such permission can be costly and embarrassing to you or your business. 

Be careful when selecting and adopting new trademarks (i.e. logos, product names, slogans, etc.).  It is important to research whether a new trademark may infringe on a third party’s copyright and/or trademarks. Consult with a legal advisor to research the availability of your new trademarks before investing large sums of time and money in adopting new brand names, logos or slogans.  A failure to do so may result in a need to re-brand or, at worst, litigation.  Bottom line:  the loss of momentum for your new brand, not to mention the costs associated with litigation, are huge in comparison to appropriate due diligence.

Comply with license terms. Periodically review  compliance with all key licensing agreements to which you are a party and make sure you are complying with user counts and other license terms and conditions. If you are not sure, check the license or consult with your legal advisor.

Protect third party confidential material.  Many businesses will have material from third parties that is protected under confidentiality agreements.  Segregate this material from non-confidential material, don’t disclose to third parties without authorization, and only discuss that information with others on a “need to know” basis.

Why Does Intellectual Property ("IP") Matter?

IP is an asset of every business and indeed, may be the most valuable assets of a business.  Such assets include brand names, logos, slogans, domain names, software code, literary works, inventions, confidential information and trade secrets (i.e. everything from your customer list to your corporate logo).

For many businesses IP may be unprotected, under-exploited, or vulnerable to theft or infringement by third parties thereby reducing the potential competitiveness of a business and opportunities for growth.   Any individual or organization which invests in innovation fails to capture and exploit the true value of that investment if IP rights are not protected, commercialized and enforced.  Moreover, to the extent that a third party’s IP (i.e. software) is being used in conducting business, it is essential to know what your rights and obligations are to any such third party to ensure you are not violating the rights of third parties.

New Winnipeg Jets Logos Unveiled

True North Sports & Entertainment, owners of the Winnipeg Jets, have today released images of their new logos for the upcoming NHL season:

The logos represent a departure from the previous "Jets" logo as the team seeks to make a new identity from that of the former Winnipeg club. and an opportunity to generate additional fan enthusiasm for the return of NHL hockey to the city.

Disney Applies for 'SEAL TEAM 6' Trademark

Within one day of the raid on Osama bin Laden's compound, Disney Enterprises, Inc. filed three trademark applications  with the U.S. Patent and Trademark Office ("USPTO") for the trademark SEAL TEAM 6 in association with a range of products and services, including:  entertainment and education services, clothing, headwear, footwear, a range of toys, electronic games, etc. and  "snow globes", Christmas stockings, tree ornaments, and decorations.

Given the rushed nature of these "intent to use" filings it will be interesting to see whether the full range of products do, in fact, appear on department store shelves in the months ahead or whether Disney's filing was merely an effort to stake a claim on the Trademarks Register while they contemplate the business case and/or approach to capitalizing on one of the more significant United States news stories in recent years.

CIRA Warns .ca Owners of Phishing Scam

The Canadian Internet Registration Authority ("CIRA") has distributed an announcement that it has received reports of domain name holders of a phishing scam which is utilizing images from the CIRA website.  Generally, such scams involve an email sender masquerading as a trustworthy entity seeking to acquire sensitive information from the email recipient such as usernames, passwords and credit card information. 

In this case, the scammer masquerades as CIRA by using CIRA logos, etc. to collect personal information and credit card numbers from those whom have registered .ca domains. 

CIRA advises that it does not ask domain owners for credit card information (which is instead gathered by .ca certified domain Registrars) and if such information has been provided it is recommended that the credit card company be advised immediately.

Anyone with questions or concerns may contact CIRA by telephone at 1-877-860-1411 or by email at info@cira.ca.

Starbucks Unveils New Logo

                                                                                                       Image Courtesy of Starbucks Corporation.

Starbucks Corporation has announced it will be rolling out a new logo in its stores in March, 2011 as part of the company's 40th anniversary.  As the evolution of the Starbucks brand (above) clearly indicates the new logo avoids referencing both "Starbucks" and "coffee" which has sparked speculation that the company is moving toward expanding the company's product focus beyond the realm of coffee, specialty beverages and related products and services.  Indeed, in an announcement on the company's website, Starbucks president and CEO Howard Shultz acknowledges the company's movement toward new products and "channels of distribution" as the 40th anniversary roll out approaches.  The customer comments on the new logo, (some of which appear on the same page as the Shultz announcement), appear mixed while some marketing professionals acknowledge the trend of certain well-known brand owners (i.e. Nike) have been moving toward removal of brand names alongside company logos.

Implications of the .xxx Domain Extension on Trademark Owners

 

The Internet Corporation of Assigned Names and Numbers ("ICANN") announced that it is considering the submissions of the ICM Registry to develop and administer the controversial .xxx domain extension and will defer its decision until February, 2011 after several years of delay on the issue.

The .xxx extension is intended to consolidate pornographic, adult entertainment and related providers within a single domain extension thereby enabling consumers of such content (or those wishing to avoid it for filtering purposes) a simplified means of identifying adult websites. 

Trademark owners operating in trade channels entirely unrelated to the adult entertainment industry are concerned about the potential consequences of opening up the .xxx domain extension on their brands (i.e. is there a risk of a particular trademark being registered as a .xxx domain without the consent or knowledge of the brand owner).

To resolve this concern, the ICM Registry ("ICM") has indicated that the sunrise launch of the .xxx extension will include an opportunity for businesses, organizations and private individuals which do not wish to be associated with the adult industry (via the .xxx domain extension) to protect their trademarks, names, etc. through a blocking program involving a one time fee and registration.  As described by ICM, the process, developed in partnership with Valideus, is intended a departure from the traditional method of protecting brands (i.e. via defensive domain registrations) to enable rights holders to pre-emptively register their protected terms to ensure that they are not associated with the adult content associated with the .xxx domain extension.

Until contract negotiations are finalized between ICANN and ICM brand owners can take no action but would be well advised to monitor the issue via their trademark counsel to obtain any updates on the final .xxx blocking program, process, fee(s), etc.

Recognizing the Value of Trademark Registrations: Celebrity Edition

Katie Thomas of The New York Times recently wrote an article on professional athletes seeking to obtain trademark protection as a means of both protecting their personal brand and capitalizing on their fame.

A quick review of the USPTO and CIPO databases reveals trademark applications and registrations for names, slogans and catch phrases for such athletes as Chad Ochocinco (Logo), Terrell Owens ("I LOVE ME SOME ME", The TO Design, and "GETCHA POPCORN READY"), and Darrelle Revis' trademark "REVIS ISLAND" while certain sponsors such as Nike International Ltd. protect the brands associated with their own athletes (i.e. LEBRON and the Lebron Design).

The Gap Reverses Logo Redesign

(You may have guessed that the Gaplash logo appears on the right)

Whether simply a misguided effort to reinvigorate the logo of Gap Inc. or shrewd publicity stunt to guage public sentiment for its brand, Gap Inc. distributed a press release announcing a reversal of a rebranding process commenced online less than one week ago.

The company, which attempted to utilize social media and crowd sourcing to devise, launch and monitor the public reception for the new brand last week, is now utilizing social media such as facebook, to apologize to its customers and reverse its position, stating "We've heard loud and clear that you don't like the new logo. We've learned a lot from the feedback. We only want what's best for the brand and our customers".  See Marka Hansen, President, Gap North America's Huffington Post blog post which explains the company's position here.

While some commenters (see, for example, comments to the Globe & Mail article here) have suggested the move was simply to grab media headlines and reaffirm public loyalty to the brand, perhaps the lesson that can be distilled here is that companies with established brands cannot simply disregard their consumers when engaging in changes to their imaging.  In this case, efforts at crowd sourcing feedback likely did not canvass a broad enough audience to solicit input as to  whether the effort to "modernize" the logo would be well received, etc.  Nevertheless, recent publicity over the change will likely provide little damage to the company's overall image and indeed, the additional media exposure may heighten the consumer interest in the company as the holiday shopping season approaches.

Practice Notice Issued for Trademark Priority Claims

On September 2, 2010 the Canadian Intellectual Property Office ("CIPO") issued a Practice Notice to provide guidance on the use and interpretation of (Paris Convention) priority claims in accordance with the Trade-marks Act (the "Act").

Priority claims, which are available within six (6) months of the after the date on which the earliest application was filed for registration of the same or substantially the same trademark for use with the same kind of wares or services (the "Priority Period"), allow trademark applicants to essentially 'back date' the date of subsequent filings to the date upon which the original application was filed.  Claims for priority may be submitted in the following ways:

1.  including the claim in an application at filing within the Priority Period;

2.  by amending a previously filed application to include the claim, provided the amendment is submitted within the Priority Period; or

3. by filing a separate declaration in respect of an application within the Priority Period.

A priority claim must reference the date of, and country where, the initial application was filed and, where an error has been made an Applicant may only correct those claims within the Priority Period.  The Trade-marks Branch has indicated that a priority claim need not include the application number in the priority claim - however, such applicants may be required to provide a certified copy of the earlier application.  If an error has been made in the application number referencing the earlier filed application, the Trade-marks Branch has indicated that the number may be corrected at any time before registration.

CIRA Consulting on Domain Name Disputes

The Canadian Internet Registration Authority ("CIRA") is currently conducting a consultation on its Domain Name Dispute Resoultion Policy ("CDRP") to obtain feedback on the dispute process and fees. 

Anyone interested in commenting on the consultation period may participate through following this link until September 17, 2010.

 

Canada Considers Changes to Trademarks Opposition Process

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.

 

Consultation Period Announced Re. Priority Claims and Registration and Use Abroad

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".

E-Services Now Available in Canadian Trademark Oppositions

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).

The Trademarks Branch and TMOB Introduces "Works in Progress"

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.

Trade-marks Opposition Board Announces E-Services!

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. 

Trademarks Office Consultation Period Opens on Three Topics

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).

 

New Practice Notice for Extensions of Time in Examination

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).

 

ICANN Announcement to "Internationalize" Domain Names

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.

 

Trademarks Office Releases An Updated Wares and Services Manual

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.

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

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.

Upcoming Changes to Section 45 Proceedings

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.

Protect Your Identity on Facebook

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.

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. 

The Facebook FAQ is available here and provides useful information regarding the new policy and strategies to address intellectual property rights.

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.

Additionally, if you become aware of a third party adopting a personal URL, Facebook Inc. has introduced an IP infringement form to enable rights holders to provide formal notice regarding your pre-existing rights.

Overall, the introduction of personal URLs is intended to enable usage of a Facebook username as a search term while in any search engine.  Nevertheless, the unintended consequences for this development are three-fold:  (1) users must be careful to establish appropriate privacy and security settings to avoid publicly disseminating personal information; (2) trademark owners will be required to police their trademark over Facebook; and (3) trademark owners with pending applications or common law trademark in different jurisdictions may face challenges over the ownership of a particular Facebook URL.  Moreover, it is unclear how Facebook intends to resolve contests between different and perhaps competing rights holders for the same trademark in different jurisdictions or similarly, as between distributors, licensees and licensors, etc.

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

USPTO Issues Warning About Unsolicited Communications

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).

Intellectual Property Agreements Announced Between China and the UK

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.

Warning Issued Re. Non-Solicited Invoices

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.

Services

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