New Fee Proposal for Trademarks in Canada

The Canadian Intellectual Property Office (CIPO) has published a Fee-for-service proposal (the Proposal), seeking public input by July 5, 2016.  As previously reported on this blog, the Canadian government significantly amended the Trade-marks Act (the Act) in 2014, in order for Canada to accede to the Singapore Treaty, the Nice Agreement and the Madrid Protocol. Those amendments have not yet come into force, however, pending the adoption of new Regulations on various matters, including fees.  The Proposal is the first step in adopting new Regulations on the fees that will be applicable.

The two most significant changes in the Proposal are that:

- there will be one fee payable at the time an application is filed with CIPO, while the current requirement for payment of a registration fee will be done away with; and

- the application fee will include only one Nice Class of goods or services.  Additional fees will be payable for each additional Class of goods/services that an applicant wishes to include in the application.

The proposed fees themselves will be in line with what applicants are currently used to in Canada, with reductions in some cases, particularly if the application covers only one Class of goods/services.  Having said that, applications that contain more than two Classes of goods/services will face higher fees.  Renewals will similarly be based on the principle of one fee for one Class of goods/services, with additional fees payable for additional Classes of goods/services.  There will also be additional fees payable for applications and renewals that are filed on paper as opposed to online.

Also included in the Proposal are new proposed service standards for issuance of Filing Notices and processing of Renewal requests. The Renewal request processing standard will be different, depending on whether or not the goods/services have previously been grouped into Nice Classes.

CIPO has asked for public input on the Proposal by July 5, 2016 and depending on what complaints might be received by then, an independent advisory panel could be appointed by August 15, 2016.  We will publish further posts regarding the status of the Proposal as matters progress.

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Supershuttle Loses Rebuttal – Canadian Registration Scuttled

In a recent Federal Court of Canada (the “FC”) decision, 2015 FC 1259, the FC dismissed an appeal by Supershuttle International, Inc. (“Supershuttle”) to overturn a decision of the Registrar of Trade-marks (the “Registrar”), expunging its Canadian trade-mark registration for SUPERSHUTTLE (the “Mark”) for non-use.

Supershuttle provides ground transportation services to and from airports in cities that are all located outside of Canada.  Canadians wanting to utilize Supershuttle’s services can and do book tickets and make reservations through their website, which is accessible to persons who are physically in Canada.  In December 2003, Supershuttle registered the Mark in Canada for use with “airport passenger ground transportation services” (the “Registered Services”).

In February 2012, a summary cancellation proceeding was brought against the Mark pursuant to section 45 of the Trade-marks Act, requiring Supershuttle to provide evidence demonstrating use of the Mark in Canada in the three preceding years.  Despite the evidence submitted by Supershuttle, the Registrar concluded that Supershuttle had not used the Mark in association with the Registered Services in Canada.  The Registrar’s decision was based largely on the fact that Supershuttle did not actually operate any shuttles or vans in Canada, and on the basis that simply advertising the Registered Services in Canada through its website, without those services actually being available for performance in Canada, was not sufficient to demonstrate use.

Supershuttle subsequently appealed to the FC and raised the following issues:

  1. Did the Registrar err in its interpretation of the statutory meaning of “use”; and
  2. Is a trade-mark “used” in Canada in connection with a service if an essential step in the performance of that service happens in Canada?

The FC ultimately denied Supershuttle’s appeal on the basis that, while the observation of a trade-mark by individuals based in Canada may demonstrate use of that mark, the services with which that mark is purportedly being used must still be performed in Canada.

In this case, despite the Mark being advertised and known in Canada and used by Canadians for the purposes of making bookings and reservations, “reservation services” were not included as part of the Registered Services; as such, the Mark was not being “used” in connection with the Registered Services.  Consequently, the FC concluded that the Mark could not be maintained.

The decision in this case seems to run contrary to at least one previous decision of the FC, where the “use” of the trade-mark at issue in association with travel services was deemed to also be “use” in association with incidental or ancillary services, such as ticketing and reservation services.  While the trial judge in Supershuttle recognized that “use” of a trade-mark in relation with a service must be decided on a case-by-case basis, the apparent inconsistency in the case law is a good reminder that trade-mark applicants should exercise caution when deciding upon the services to be included as part of a trade-mark application.  In particular, applicants should be cognizant of the risk associated with including services that are, in fact, not offered in Canada – even if the trade-mark can be observed by individuals in Canada.

 

Proposed New French Language Requirements in Québec

As discussed in our previous blog entry, after losing the battle in court over the requirement that businesses must add French language to English trade-marks displayed on signage outside their stores, in June 2015 the Québec government announced its intention to make modifications to Québec’s Regulation respecting the language of commerce and business (“Regulation”).

As recently reported in the media, the Québec government has just announced the proposed changes to the Regulation, the stated purpose of which is to ensure that commerce in Québec has more of a French language presence. The proposed changes require businesses to ensure that when trade-marks in languages other than French are used on exterior signage (as defined by the proposed rules), a French language component is displayed on the site as well. The proposed amendments set out the circumstances in which the new rules will apply, including when the trade-mark is displayed on interior signage that is intended to be seen from the outside, or when exterior signage is located in a mall or shopping centre complex.

The French language component may take the form of a slogan, a generic term or description, or other information concerning the products and services offered by the business. The proposed rules do not require that the French component be predominant over the non-French trade-mark, but they require that the French component be permanently visible in a manner similar to that of the non-French trade-mark being displayed, and be legible in the same visual field as the trade-mark.

A helpful illustration of acceptable and non-acceptable signage under the proposed changes can be found here.

A 45 day period for public feedback on the proposed amendments commenced on May 4, 2016. We will report again when there is a further update. In the meantime, brand owners using trade-marks in languages other than French in Québec should start considering how they will comply with the new French language requirements, assuming those requirements are passed into law, and whether their proposed strategy necessitates any changes to their current Canadian trade-mark portfolio.

 

 

About the Blog

The authors of the Canadian Trademark Blog are all members of the Canadian law firm Clark Wilson LLP, based in Vancouver, Canada. Each author's practice focuses–either in whole or in substantial part–on Canadian intellectual property law. Together, they manage the trade-mark portfolios of local, national and international brand owners in nearly all industries and markets.

The Authors