By Adam Smith
June 02 2010
The wheels at the Canadian IP Office (CIPO) are grinding forward - but they are moving at least. Long regarded as one of the most backward IP offices among its peers in the G8 countries, CIPO is now pushing for amendments to Canada's Trademarks Act. The goal, top officials recently told WTR, is accession to the Madrid Protocol and the Singapore Treaty on the Law of Trademark.
"We'd like a government decision on whether to join these treaties or not," notes Lisa Power, director of CIPO's trademark branch. "In the meantime, we'd like to upgrade the Act. Any amendments we make would have those treaties in mind."
While accession to international norms would be welcomed by foreign rights holders, the office's eagerness to delete one existing provision of the Act will cause some ripples among this group of applicants, which represents half of its client base. Section 16 (2) provides for trademark applications based on foreign registration and use, and has long been advantageous to foreign applicants. After a recent consultation on the topic, the office dropped plans to delete this section but Power is now hoping that treaty-friendly amendments would require the deletion of 16 (2) anyway. Singapore has only two bases for filing (actual use and intent to use) so, according to Power, "We're looking to simplify the bases of filing in Canada towards these two. The fact that you'd registered and used the mark abroad would no longer be relevant. The goal is to treat all trademark owners the same."
Some foreign rights holders may not be entirely happy with this proposed change, but they can still file based on intent to use. The net result is both a move away from a register that could become cluttered with marks never used in Canada and a move towards a harmonized system. This must be good for all trademark owners - yet, according to one practitioner, those in Canada are not fussed. "While the tone of the consultation documents suggests strong enthusiasm on CIPO's part to move forward, the mood among practitioners is more cautious and the mood among business owners appears - thus far at least - to be best characterized by indifference," said Jeffrey Vicq, an associate at Clark Wilson and author of the Canadian Trademark Blog, earlier this year.
For now it seems that CIPO will forge ahead anyway. The office is also making the right noises with regards to non-traditional marks. For many years, CIPO took the position that one case prohibited the registration of non-traditional marks. In the case concerned, Playboy's claim against a third-party's verbal-only use of its PLAYBOY mark failed because the court said that, for infringement to be found, a mark had to be "visual". "The office therefore took the position that sounds were not trademarks," explains Power. "We've taken another look at the decision and really it's focused on use, not the mark itself."
This realization may pave the way for non-traditional marks in Canada, which already has broad definition of trademarks. It is likely that some cosmetic changes to CIPO practice will be made soon, regarding marks that can be represented visually at least. "That is probably within the context of the current legislation," says Power. "For sounds and smells, we'll need a more extensive amendment." Expect a proposed practice note and consultation process on non-traditional visual marks in the Fall.
Later this year, news may also come of CIPO's progress with its IT upgrades. The office is analyzing statements from the 30 companies which pitched in to its request for information regarding online case management solutions and electronic workflow systems. "We're looking at something similar to the system at the US Patent and Trademark Office," says Power. "Practitioners and applicants should be able to log into a system in which they can see their correspondence with the office, the status of their applications and their portfolios, etc."
The question is whether red tape will prove too much of a hindrance for the introduction of a modern system. In 1996, Canada became one of the first countries to launch electronic filing. Power acknowledges that, since then, the office has failed to invest. "Now we're paying the price," she told WTR. "And the government process for acquiring technology is slow. By the time you get through the bureaucracy you're behind."
Non-traditional visual marks notwithstanding, there is no quick fix to Canada's trademark problems. But at least the wheels are turning.
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