Can’t Stop, Won’t Stop: CIPO Changes Section 45 Procedures

It’s been a busy year for CIPO, and the organization is yet again amending some of its practices.  This time it has s. 45 in its sights.

As regular readers know, s. 45 of the Trade-marks Act provides a mechanism by which an interested party can seek to summarily expunge a registered trade-mark for three years of non-use.  CIPO sought public input on a proposed changes to s. 45 practice earlier this year, and last week introduced its new practice notice, which is slated to come into effect on September 14, 2009.

Like the recent changes to Opposition proceedings, the changes to s. 45 practice appear aimed at streamlining the process.  Most notably, the planned changes limit the extensions of time available for the submission of evidence.  The current standard is an extension of three months with additional extensions available on consent or if exceptional circumstances are shown.  The new standard provides for one extension of four months, and establishes that grants of additional extensions will be rare: neither the the consent of the parties to additional extensions, nor the parties’ engagement in settlement discussions  will be seen by the Office as sufficient reason to provide additional time. Read more

Ch-ch-ch-ch changes!

Following up on one of our earlier posts, the Canadian Intellectual Property Office recently adopted a couple of revisions to its examination practices.

Since June 17, the Office has been providing six month periods to respond to Examiner objections, as opposed to the four month window previously provided.  In addition, the Office is no longer issuing ‘doubtful case’ or ‘courtesy letters’ – those letters that were sent to trade-mark applicants identifying co-pending applications for allegedly confusing marks having a later entitlement date.

This latter change reinforces the importance of both having watch services in place, and regularly reviewing the Trade-marks Journal for the advertisement of marks of interest.

Psion Capitulates In Netbook Battle

Following up on a story we reported earlier this year, Mississaugua, Ontario-based Psion Teklogix appears to have resolved its trademark dispute with Intel Corporation by undertaking to withdraw all of its NETBOOK trademark registrations.  As regular readers of our blog will recall, Psion’s registrations for NETBOOK were being challenged in a number of jurisdictions, including Canada, by Intel and others on the bases of non-use and non-distinctiveness.

While the Psion press release makes no specific reference to the terms of settlement, it seems likely that Intel persuaded Psion to formally abandon the NETBOOK brand by providing a cash payment to the Canadian company.  It is not clear to what extent, if any, Dell Inc. – who had joined Intel in attacking Psion’s registrations – was a formal part of any such settlement.

The news of the settlement is not particularly surprising: Psion had a long and expensive row to hoe defending the various actions in the jurisdictions in which it was under attack, let alone asserting its rights around the world to stave off allegations of non-distinctiveness / genericide.  Moreover, Intel and Dell no doubt both had more resources to apply to the case than Psion did.  Given all of that, the cost-benefit analysis pushes one to settlement pretty quickly. Read more

Ch-ch-ch-ch Changes? CIPO’s Client Consultations Continue

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

Limited Evidence of Use on Section 45 Proceeding

Brouilette Kosie Prince v. Great Harvesting Franchising, Inc. involved two Appeals under section 56 of the Trade-marks Act from decisions of the Opposition Board.  The Appellant had sought, unsuccessfully, to have the Registrar expunge two trademarks pursuant to section 45 of the Act, namely two design trademarks, both for GREAT HARVEST BREAD CO. & DESIGN.  The one was registered for use in association with the services of “operation and franchising of retail bakery shops”.  The second was registered for the same services, as well as services described as “franchising services, namely offering technical assistance in the establishment and/or operation of retail bakeries and retail bakery shop services” and wares described as “bakery goods, namely bread, cookies, muffins, and cinnamon rolls; wheat; jams and jellies; clothing, namely hats, sweatshirts, aprons, t-shirts and sweaters”.

The Federal Court agreed with the Opposition Board that the one mark registered solely in respect of the services could be maintained in its entirety and the other could be maintained in part.

In the course of the section 45 proceeding, the owner of the trademark had provided a Statutory Declaration that included two photographs (the first showing bread baskets sitting on a portable table in a mall, with a banner pinned to the table and the second showing the banner with the trademark in full), a page from a booklet regarding how to become a franchisee, and four labels, together with invoices of sales for one particular day in the three-year period preceding the Section 45 Notice.  No further evidence was provided by the owner of the trademark on the Appeal. Read more

Window of Opportunity: Extra savings on CTM applications until May 1, 2009

While not, strictly speaking, a Canadian trade-mark issue, many Canadian trade-mark owners will be interested in this limited time opportunity to save money while obtaining protection for their marks in the European Union.

The official fees for European Union Community Trade-mark (“CTM”) applications are being reduced by about 40% (from EU 1,600 to EU 900).

In addition, applicants who apply before May 1, 2009 can save an extra EU 150, because while the final registration fee (EU 850) has already been eliminated, the minimal increase in filing fees (from EU 750 to EU 900) does not take effect until May 1, 2009.

We encourage trade-mark owners considering CTM applications to act quickly to take advantage of the extra savings available before May 1, 2009.