CIPO Seeks Consultation On More Proposed Changes

The Canadian Intellectual Property Office recently posted a consultation, requesting comments on three proposed changes to its Office practice.  The proposed changes are all relatively minor, but worth noting.

The first proposed change is that the Registrar will no longer require applicants to confirm that they are a “person” as defined in Section 2 of the Act.  Previously, the Examination Manual has required Examiners to seek confirmation from applicants where it’s not clear from the application that the applicant is a legal entity – for example if a individual files an application under a “doing business as” name rather than under their legal name.  Under the proposed Practice Notice, Examiners will no longer request clarification from the applicant and it will be up to the applicant to ensure that it complies with the Act in this regard.

The second proposed change is in relation to colour claims in applications.  The Act currently provides that unless an application is for a word mark not depicted in a special form (i.e. if the mark is anything other than a word mark in block letters), then the application must contain a drawing of the mark and if colour is claimed as a feature of the mark, the Regulations stipulate that the colour(s) must be described.  Rule 28 of the Regulations provides that if a description of the colour(s) as provided by the applicant is not clear, the Registrar can cause the applicant to provide a drawing of the mark, lined for colour in accordance with a chart that is set out in Rule 28.  This chart contains different lining specifications for all the basic colours but there is no indication of how (or whether) an applicant is to differentiate between different shades/hues of a particular colour – for example there is a specific line drawing for the colour “Blue” (horizontal lines) in Rule 28, but this would apply to light blue, dark blue and everything in between. Read more

World Trademark Review publishers launch TM blog

Our friends over at the World Trademark Review have recently launched what they’re calling the first blog by specialized IP journalists.  The group – which already offers the widely respected World Trademark Review magazine, several periodic update services, and a variety of directories, special reports and the like – anticipates that the launch of the blog will provide them with another means to report on how developments in trademark law will affect the wider business community, in addition to providing discussions of legal updates and case reports.

We welcome the WTR to the blogoshpere, and look forward to their continued, valuable contributions.

Blawg Review #251

This Blawg Review comes to you from the Canadian Trademark Blog, resident in Vancouver, British Columbia – a blawg run by several of the talented trademark law practitioners at Clark Wilson LLP.

Our city, Vancouver, is one that knows a lot about hosting – whether it be blog carnivals, tourists, or currently, the Winter Olympics. And, given all the excitement on the streets around us right now, we thought it appropriate that we take “Vancouver: Olympic Host City” as a theme.

As Vancouver stepped onto the world stage this past weekend to embrace the pandemonium that comes with hosting the 2010 Olympic and Paralympic Winter Games, we cannot be help but reflect on the hard work our city has put in through several years of preparations to welcome the world in a fashion best described as “Citius, Altius, Fortius”. As athletic enthusiasts, corporate representatives, government officials and athletes themselves continue to pour in from around the globe, Vancouver will be in the spotlight over these next two weeks – much like the athletes themselves, delivering the performance of a lifetime. (And of course, we want to keep in mind that some of those athletes may be lawyers too, as noted by Business Insider Law Review!) Read more

Trademark Statistics: Another Year in Review

The Canadian Intellectual Property Office released its 2007-8 Annual Report a few weeks back.  A few highlights:

  • over 47,500 applications were filed in the twelve month period ending March 31, 2008, reflecting nearly a 5% increase over the previous year
  • Canada remains the most common country of applicant origin, with over 20,000 applications filed; the US placed second, with over 15,400 applications, while applicants from Germany, the United Kingdom and France rounded out the top 5
  • despite the addition of 24 new Examiners, turn-around times between filing and first exam increased by approximately 1.6 months per application, with the average turn-around time being 6.8 months
  • the number of Statements of Opposition filed increased by 25%, reversing declines seen in the previous three years
  • in contrast, the number of Section 45 (cancellation) notices issued fell to its lowest point in three years
  • interestingly, there was a 41% increase in the total number of trademark assignments filed with the Office.

Further details can be found in the full report, available here.

JAVACAFÉ: Clearly Descriptive in the French Language

Following up on an earlier blog posting, we note that the Supreme Court of Canada has refused leave to appeal from the Federal Court of Appeal’s decision in Shell Canada Limited v. P.T. Sari Incofood Corporation

The Court of Appeal earlier concluded that JAVACAFÉ when sounded as two words was clearly descriptive, in French, of the claimed wares, namely, coffee products.

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.