An update to the post below: the Supreme Court of Canada announced this morning that the Scotch Whiskey Association has been unsuccessful in obtaining leave to appeal before the Court. A panel of three judges dismissed the Association’s leave request, with costs.
The Canadian Intellectual Property Office has engaged in a number of client consultations recently. Considering changes to Section 45 practice, changes to practice before the Opposition Board – even changes to the method by which it publishes practice notices – CIPO has been soliciting client and stakeholder views. (On the Opposition point, CIPO’s changes to practice before the Board came into effect on March 31, 2009.)
CIPO is now engaged in a new consultation – this one concerning three separate issues. The first concerns deadlines for responding to Examiner reports. CIPO is proposing to extend the deadline for responding to such reports from four to six months.
The second concerns deadlines for responding to CIPO’s requests for outstanding information concerning transfers. Here, CIPO is proposing doing away with such deadlines altogether, though of course the transfer will not be effected it CIPO’s records until all required materials have been provided. Read more
The Canadian Intellectual Property Office recently released its 2009-2010 Business Plan to the public. The Plan is designed to direct CIPO toward its goal to “be a leading intellectual property office that is recognized for excellence in its products and services while strengthening Canada’s innovative capacity through ongoing quality improvement and continuous development of employees.”
For trademark practitioners, owners and other stakeholders, the Plan contains a few interesting tidbits:
- the Trade-mark Opposition Board plans to establish a new service standard of four months from the date of a hearing for the issuance of final decisions of the Registrar in both section 45 and opposition cases;
- the Board also plans to use 2009 to create an action plan relating to the goal of making section 45 and opposition case decisions available online;
- similarly, CIPO as a whole will use 2009 to assess activities and determine requirements related to planned support of:
- the online filing of extension of time requests for the Trade-marks Opposition Board;
- the online filing of extension of time requests at the examination stage for trade-marks;
- certain enhancements to the electronic application filing system for trade-marks; and
- the electronic transmission of examiner’s reports and trade-mark correspondence.
The Trade-marks Branch also plans to conduct a feasibility assessment related to the prospective implementation of a program to assist unrepresented owners seeking trade-mark protection, similar to programs currently offered by each of UK’s Intellectual Property Office and IP Australia.
Dogwood Initiative, a British Columbia environmental group, is facing legal action from the Royal Canadian Mint over a campaign to add one million oily loon decals to loonies in circulation. (For our international readers, “loonie” is the commonly used term used to refer to the Canadian one dollar coin.) Dogwood’s campaign is intended to create awareness about the risks of oil tanker traffic on BC’s north central coast, in the hopes that legislation might be passed banning such traffic.
The Royal Canadian Mint has alleged Dogwood Initiative’s activities bring it offside the Currency Act, but query whether the Mint may also have an action under the Canadian Trade-marks Act (the "Act"), for infringement of the Mint’s Official Mark rights in the loonie.
Section 9 of the Act deals with Official Marks, and in particular, it prohibits the adoption in connection with a business, as a trade-mark or otherwise, of any mark which consists of, or so nearly resembles as to be mistaken for, an Official Mark. Read more
On December 31st, while many readers (and writers!) of the Canadian Trademark Blog were likely raising a glass to celebrate the New Year, long-awaited amendments to the Canadian Trade-marks Act quietly came into force. The changes pertain to Section 11.1 of the Act which deals with geographic indications. In particular, the amendments eliminated several terms from a list of wine names that had been deemed generic, and accordingly available for use by anyone, in Canada.
The amendments were motivated by an agreement struck in 2003 between the Canadian government and the European Community concerning trade in wine and spirits. Under the terms of that deal, the Canadian government agreed to amend the Trade-marks Act to gradually eliminate the use of certain European wine and spirit names on Canadian labels, thereby opening the door to European producers to apply for the protection of these names as geographical indications in Canada. Read more
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.
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.