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.

Under the proposed Practice Notice, where a colour claim is for “a colour not found in Rule 28”, the applicant is required to include a description of the colour code and reference system for each colour claimed.  If the name of the colour code or reference system is the subject of a registered mark, that must be specified as well.  The example provided is: “the colour turquoise (PANTONE 15-5519)* is claimed as a feature of the mark.  *PANTONE is a registered trade-mark”.    It’s not entirely clear from the wording of the draft Practice Notice, what the effect of this change will be, if implemented.  It’s already open to applicants to describe a colour by reference to a particular colour code or reference system.   What may be intended is that the Registrar is hoping to be able to force applicants to specifically designate shades/hues of colour, rather than just claiming the entire spectrum of a particular colour (eg. turquoise, rather than simply “blue” or “green”) and thereby narrow the scope of what the registration covers.  The case cite that is provided in the body of the Practice Notice certainly hints at this.  However, if this is the intent, the wording of this proposed Practice Notice doesn’t really accomplish this intent.

The third proposed change is to provide for automatic deemed withdrawal of Oppositions and Applications in three different scenarios and to clarify that no retroactive extensions of time may be requested in such circumstances.   The three scenarios are: (i) where an opponent has failed to submit evidence or a statement that it does not wish to submit evidence within the time limit for doing so and has not requested an extension of time to do so within such time limit; (ii) where an applicant has failed to file and serve a counter statement within the time limit for doing so and has not requested an extension of time to do so within such time limit, or where an applicant has failed to submit evidence or a statement that it does not wish to submit evidence within the time limit for doing so and has not requested an extension of time to do so within such time limit; and (iii) an applicant has failed to file a Declaration of Use or request an extension of time to do so within the time limit for doing so.

In all of these cases, the Registrar will no longer first issue a notice indicating that the opposition is deemed to be withdrawn or the application will be treated as abandoned, prior to actually issuing a notice that the opposition is deemed withdrawn or that the application is deemed to have been abandoned.  Together with the pronouncement that retroactive extension requests can’t be granted, this means that applicants and opponents will need to be even more vigilant about meeting the specified deadlines.

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Neil Melliship is a Partner and co-chair of the Intellectual Property and Information Technology practice groups at the Vancouver-based Canadian law firm of Clark Wilson LLP. Neil is a lawyer and a registered Canadian Trademark Agent, who actively speaks and writes on trademark and other IP issues including those relating to the Internet, domain name disputes and e-commerce. Neil is consistently rated as a Leading Trademark Practitioner—Individuals: Prosecution and Strategy, by the World Trademark Review (WTR) 1000. Neil is also listed in the Canadian Legal Lexpert Directory as Rated Repeatedly Recommended in the area of Intellectual Property. He has also been repeatedly named by Best Lawyers in Canada in the categories of Intellectual Property Law, Technology Law and Information Technology Law.