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

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.

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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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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 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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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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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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