Section 45 Proceeding Practices to Change Again?

The Canadian Intellectual Property Office has announced that it will soon open a public consultation period relating to proposed changes to Section 45 proceedings.  The Office advises its goal is to modernize and streamline the Registrar’s practice; what precisely this means, however, is not yet known.

Nonetheless, a few details have emerged: the anticipated changes will include a new practice of issuing, in limited cases, final decisions directly following the filing of evidence; changes are also expected to the Registrar’s practice concerning the granting of extensions of time.

We’ll provide a detailed discussion of the possible changes once the proposed practice notice is made available.

Practitioners Warm to Cooling-Off Periods

Regular readers of the Canadian Trademark Blog will recall that this past fall we reported on a public consultation undertaken by the Canadian Intellectual Property Office respecting proposed revisions to trademark opposition proceeding practices.

CIPO has recently released a compendium of the comments and suggestions it received during the consultation process.

While the submissions touch upon a broad number of issues implicated by the proposed practice notice, their common thread relates to the proposed “cooling-off” period.  Nearly all of the submissions argue that to make the “cooling-off” period available only prior to the filing of a counter-statement is counterproductive to the amicable settlement of the proceeding.  Instead, they argue that the request for a cooling-off period should be available at any time during an opposition proceeding.

In a posting on its site, CIPO advises that the proposed practice notice will be amended “to reflect decisions taken by CIPO as a result of comments received from stakeholders during the consultation period.”  Precisely what changes CIPO will make, however, will not be known until later this month when CIPO posts the revised practice notice on its website.  The final practice notice is expected to be published in the Trade-marks Journal and come into effect in February 2009.

Canadian Law Blog Awards: the 2008 Clawbies

I am happy to report that this blog has been selected as the “Best Practitioner Support Blog” in the 2008 Clawbies – the Canadian Law Blog Awards.  We are delighted to be recognized for our efforts, particularly given the number of excellent law blogs in Canada.

This award caps off a banner year for us here at the Canadian Trademark Blog: in April, we were selected as a “Top Blog” by the LexisNexis group, and our blog continues to appear on their worldwide Trademark Law Center page; in May, we received terrific coverage in the highly respected Managing Intellectual Property magazine.

Many thanks to all of you who read, comment and link to the blog; we hope that you have found the 70+ stories we posted this year both interesting and insightful.  We look forward to continuing to share our observations and analyses with you in 2009.

Happy New Year to you!

The Canadian Trademark Blog Team.

Trademark Blog Grows Again!

We’re pleased to advise that we’re adding yet one more person to the Canadian Trademark Blog team namely, Tasha Coulter.

Tasha has been practicing law here at Clark Wilson LLP since 2005, though we’ve only just recently been able to convince her to join our rag-tag band of bloggers. In addition to her work in the trademark law area, Tasha is engaged with a broad range of commercial law issues as well so we’re keen to add her insights to our examination of all things trademark-related.

We’re sure you’ll enjoy reading Tasha’s posts as much as we enjoy working with her. Please give her a warm welcome to the team.

“Bad Faith” Decision Bad News for Applicants?

A recent Opposition Board decision highlights a little-examined area of Canadian trademark law, raising questions pertaining to the entitlement to file a trademark application, and issues of good faith related thereto.

In Cerveceria Modelo, S.A. de C.V. v. Marcon, issued August 12, 2008, the Trade-mark Opposition Board upheld an opposition brought by Cerveceria Modelo against Marcon’s application to register the trademark CORONA for use in association with both a variety of beverages and with beverage bottling services.

The application was opposed on several grounds, including alleged confusion with Cerveceria Modelo’s familiar CORONA trademark. Additionally, the opposition was also founded on Marcon’s alleged failure to comply with s. 30(i) of the Trade-marks Act, which requires the applicant to file with the Registrar an application that contains a statement that the applicant is satisfied that “he is entitled to use the trade-mark in Canada in association with the wares or services described in the application.” Read more

Canada™: Second Best?

Continuing on with the recent spate of brand rankings we’ve commented upon recently, news that Canada has been rated the second best global brand in the 2008 FutureBrand Country Brand Index. The Index purports to be a comprehensive study, combining the views of 2,700 business and leisure travelers from nine countries together with expert opinions and relevant statistics to determine the world’s brightest country-brands.

The winners? For the third year in a row, Australia. The United States was nipping at Canada’s heels to finish third, with Italy and Switzerland rounding out the top five.

Review of the report’s various categories suggests that Canada’s second place finish was largely the product of generally consistent rankings across the board, with bright spots to be found in such categories as “Ease of Travel” (where we finished third), “Outdoor Activities and Sports (where we also finished third), “Families” (where we finished first) and “Easiest In Which To Do Business” (where we finished first, just ahead of the US). Read more

Bank Brands Going Bust?

A few weeks ago, we reported on the results of Interbrand’s 2008 Best Global Brands Survey, observing that the survey’s big losers, year-over-year, were financial services companies.

Of course, conditions in that industry have deteriorated significantly since then, so it is no surprise to see that Wachovia Corp. announced a $23.9 billion-dollar quarterly loss earlier today – the largest ever for a bank. And it also comes as no surprise to see that a write-down tied to a loss of goodwill made up a significant part of that loss.

What is notable, however, is the sheer size of that goodwill write-down: set at approximately $18.8 billion dollars, the write-down is more than three times that total value attributed to the Royal Bank of Canada when it was awarded the title of Canada’s most valuable brand in a 2007 Brand Finance study. Read more