CIPO announces changes to trademark proceedings

Canada
The Canadian Intellectual Property Office (CIPO) has recently issued several notices concerning various aspects of trademark proceedings.

Firstly, in a practice notice issued on June 3 2010, CIPO announced that the registrar will generally no longer require an applicant seeking to register a trademark to confirm that it is a 'person', as defined in Section 2 of the Trademarks Act. Ultimately, the onus rests with the applicant to ensure compliance with the act.

Secondly, a practice notice was issued on September 2 2010 relating to the processing of applications containing priority claims. The registrar will now require the number (or certified copy) of an earlier-filed application in addition to the date and country of the earlier application. Amendments to correct errors in the number can be made at any time before registration. This is in contrast to the date and country of the earlier application, which must be corrected during the six-month priority period.

With respect to goods or services, it is sufficient for the priority claim to indicate that the priority application was filed for registration of the same, or substantially the same, trademark for use in association with the same kind of goods or services. However, should an applicant choose to limit the priority declaration to goods only, services only or specified goods and/or services, the limitations to the goods or services covered by the priority declaration may be made at any time within the six-month priority period. After expiry of the six-month period, no amendment to remove any such limitation will be permitted.

Thirdly, as for claims to registration and use abroad under Section 16(2) of the act, a proposed notice specifies that such a claim will be complete when it indicates:
  • the particulars of the 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.
Should the application not contain a claim to registration and use abroad at the time of filing, or contain an incomplete claim, the applicant may add or substitute a complete claim before the decision of the registrar of trademarks to advertise the application in the Trademarks Journal.

Fourthly, the Trademarks Opposition Board recently published a pre-consultation notice regarding proposed amendments to the Trademarks Regulations aimed at modernising and streamlining the current regulatory framework.

One proposed amendment permits the filing of evidence electronically with the registrar, consistent with the rules of the Federal Court of Canada and other tribunals. Another proposed amendment permits parties to serve small documents by facsimile without consent or to serve documents electronically, including by email, with consent. Given that opponents rarely file reply evidence, consideration is also being given to deleting Section 43 of the Trademarks Regulations, which allows an opponent to file reply evidence as of right.

With respect to cross-examinations, the notice provides for a three-month period after service of the applicant's evidence for both parties to complete cross-examination. It also proposes to require that parties confirm in writing their intent to conduct cross-examination. The amendments also shift the responsibility of filing undertakings to the party whose affiant was cross-examined, while providing a one-month deadline after completion of cross-examination for filing transcripts and undertakings.

A particularly notable proposal relates to the sequential filing and serving of written arguments within set deadlines, providing the applicant with the advantage of viewing the opponent's written argument before preparing its own. Parties will also be required to file a request to be heard at a hearing within one month of service of the applicant's written argument.

In a related practice notice, the registrar has announced that it no longer plans to issue a first notice indicating that an opposition will be treated as withdrawn before issuing a notice that an opposition is deemed to have been withdrawn in circumstances where an opponent does not file either evidence or a statement that it does not wish to submit evidence. The registrar considers that there is no authority to grant a retroactive extension of time after an opposition is deemed to have been withdrawn under the Trademarks Act. An application under opposition will similarly be deemed to have been withdrawn where the applicant does not submit either evidence or a statement that it does not wish to submit evidence.

If adopted, the amendments will reduce the length of, and provide consistency to, opposition proceedings.

Fifthly, the registrar is considering implementing a change whereby retroactive extensions of time will no longer be granted after an application has been deemed abandoned as a result of a failure to file a declaration of use.

The Trademarks Act currently provides that an application to register a proposed trademark shall be deemed abandoned if a declaration of use is not received by the registrar before the later of either six months from the date of the notice of allowance or three years from the date of filing the application in Canada. However, where a timely request is filed on satisfactory grounds, a retroactive extension of time to file a declaration of use has been available to applicants.

Through a public consultation process, members of the IP profession have submitted comments to CIPO opposing this change in practice, arguing that it could result in unfair and unintentional abandonment resulting in a loss of rights. CIPO has not yet announced whether it will go ahead with this change in practice.

Finally, on September 2 2010 CIPO announced that it will not proceed with a proposal that, where a trademark application includes a colour claim and the colour is not already recognised in the Trademarks Regulations, the applicant would be required to include a description of the colour code and reference system for each colour claimed. Through a public consultation process, comments were submitted to CIPO opposing this new rule on the grounds that applicants could obtain broader rights for colours already recognised under the regulations, but narrower protection for any other colour. Instead, it has been suggested that applicants be permitted the flexibility to select the most appropriate method to describe colours that are not already covered by the regulations, whether in words, by listing a recognised colour code or otherwise.

Jeffrey D Morton and Heather E Robertson, Smart & Biggar/Fetherstonhaugh, Vancouver and
Toronto

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