Creativity Life Cycles : Canadian Trademark Agent and Lawyer : Joshua MacFadden : MacPherson Leslie & Tyerman Law Firm : Patents, Intellectual Property

Continuing on an earlier story, the Supreme Court of Canada today dismissed the request for leave filed by the Scotch Whisky Association application to review the issue of confusion and the applicability of section 10 of the Trade-marks Act.

Glenora Distillers International Ltd. had sought to register the trademark GLEN BRETON in association with single malt whisky and the application was subsequently opposed by the Scotch Whisky Association, which took exception to the use of a "Glen" prefix in association with whiskies not distilled and/or originating from Scotland.  While the Trade-marks Opposition Board rejected those arguments resulting in an application for judicial review accompanied by new evidence on the issue of confusion regarding the use of the "Glen" prefix in association with Scotch whiskies.  In the result, the Federal Court directed the Registrar of Trade-marks to refuse the application - a decision which was later reversed by the Federal Court of Appeal.  In light of today's decision the GLEN BRETON trademark application is now in a position for Allowance and subsequent registration in the Canadian Trademarks Office.

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The Canadian Intellectual Property Office ("CIPO") is presently seeking input regarding proposed changes to Section 45 Proceedings (i.e. Canada's "use it or lose it" provision of the Trade-marks Act (the "Act")). 

Currently, Section 45 of the Act provides a summary procedure whereby a party may request that the Registrar of Trademarks issue a Section 45 Notice requiring that the registered owner of a trademark submit, within three months, evidence of use of the mark for the three year period preceding the notice or evidence of special circumstances to excuse non-use.  If no special circumstances or evidence are filed or where such evidence is deficient, the registration may be amended or cancelled in its entirety.

Included within the suggested changes are:

1. proposals to permit the requesting party to seek a Section 45 Notice in respect of specific products and/or services rather than the entirety of those products and services listed in the registration;
2. proposed circumstances whereby the Registrar may elect not issue a Section 45 Notice which include:  (a) where the registration is currently the subject of a pending Section 45 proceeding; (b) where the Registrar determines that the request is merely frivolous or vexatious; and (c) where the request is made within three years from the date of a previous Section 45 decision;
3. restrictions to the number of extensions of time available to a registrant for the submission of evidence (i.e. limited to one extension of four months) while clarifying the circumstances which may justify an extension of time;
4. a proposal whereby the Registrar could simply elect to render a decision to cancel, amend or maintain a registration where the evidence "clearly" establishes or fails to establish use of the mark; and lastly,
5. it appears that requesting parties will no longer have the ability to withdraw the Section 45 request and thereby terminate the proceedings in circumstances where the parties are in negotiation.

The consultation period regarding the proposals ends on March 13, 2009 and thus any interested parties are encouraged to submit comment.  We will provide a subsequent post once feedback is published by the Trademarks Office.

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Once an application has been filed and processed within the Trademarks Office, the application is assigned a filing date and application number and posted on the Trademarks Register. Shortly thereafter, the application file is transferred to the attention of a Trademarks Examiner in order to assess the registrability of the application pursuant to Canadian legislation. The following general registrability criteria, among others, must be satisfied in order for an application to be registrable in Canada: [1]

• The proposed trademark, whether depicted, written or sounded, must not be descriptive or deceptively misdescriptive of the wares and/or services offered in association with the trademark or of the conditions of, or the persons employed in, their production or place of origin;
• The name, in any language, of any of the wares or services in connection with which it is used or proposed to be used;
• Confusing with a registered trademark;
• The mark must not be offend the section 9 or 10 rights of third parties (i.e. owners of Official Marks) or be prohibited by section 10(1) (i.e. must not be a denomination used to designate a plant variety pursuant to the Plant Breeders’ Rights Act);
• The trademark must not be a generic term; and
• The proposed trademark must not be “scandalous, obscene or immoral

In addition to the foregoing, the Trade-marks Act and the Olympic and Paralympic Marks Act outline further criteria and requirements for restricting the registrability of certain marks. Following examination (i.e. once registrability requirements are satisfied), an application is Approved and published in one issue of the Trade-marks Journal, thereby triggering the two month opposition period within which time any interested party may seek to oppose the allowance of your application for reasons such as pre-existing trademark rights. In the event that the application is unopposed, an Applicant does not receive notification until the Notice of Allowance is received, outlining the remaining requirements to register the trademark application. On the other hand, if opposition is encountered, the Trade-marks Opposition Board (TMOB) will provide notification and advise regarding the procedural requirements for responding to the opposition. Notably, a failure to respond to an opposition will result in the application being deemed abandoned by the applicant.

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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”. 

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