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Playing Nice: CIPO to accept applications with Nice Classifications this fall

In a milestone step towards harmonization of Canada’s trade-mark regime with most other developed countries, the Canadian Intellectual Property Office (CIPO) announced yesterday that starting this fall, it will accept trade-mark applications filed with goods and services classified using the Nice Classification system.

According to CIPO’s announcement, there will be changes to its website to take advantage of the use of Nice Classification.  In particular, the Goods and Services Manual will be redesigned to facilitate classification of goods and services, and the search capability of the CIPO online database will be updated to allow for searching within specific classes.

Historically, Canada has not used the Nice Classification system when it comes to descriptions of goods and services.  However, as part of the aforementioned harmonization process, Canada will accede to the Nice Agreement.  As we previously reported, CIPO has already started the process of assigning Nice classes to terms in its database.

Happy Canada Day to all of our readers!

C’est vrai: Québec government to continue seeking use of French on store signage

The Canadian media, including the CBC, is reporting that the Québec government intends to continue its fight to require the use of French on signage where trade-marks and business names are otherwise displayed in English.

This is the latest development in a dispute that has gone on for a number of years.  As previously discussed in our post from November 23, 2012, a number of well-known retailers took the Québec government’s French language watchdog, the Office québécois de la langue française (“OQLF”), to Court over a requirement that all retailers must use either a generic French descriptive word or a French language slogan or explanation to reflect what they are selling, if their signage features an English language trade-mark – even if such trade-mark is registered under the Federal Trade-marks Act.

The retailers, which included multinational heavyweights such as WALMART, COSTCO and BEST BUY, were successful both before the Québec Superior Court and, more recently in April 2015, before the Québec Court of Appeal.  The Courts confirmed that the display of English language trade-marks on exterior store signage, without additional French descriptive language, did not violate Québec’s Charter of the French Language (the “Charter”), as retailers in Québec are entitled to post their trade-marks as is – i.e., in English – on the storefronts of their establishments, because of exceptions built into the Charter.

The retailers were therefore granted the declaratory judgment they requested against the OQLF.  The Québec government has until June 26, 2015 to file for leave to appeal to the Supreme Court of Canada, although the CBC reports that the government will not seek such leave.

In the meantime, the Québec government has decided to approach the issue from a matter of legislative change.  Framing the issue as a matter of “politeness” and awareness of the French language, the government will propose legislative amendments in the fall that will “ensure a permanent and visible presence of French” on exterior storefronts.  The government is hoping to have the legislative amendments in place by 2016.

Using as an example the SECOND CUP coffee retailer, which apparently is known as “Les cafés SECOND CUP” in la belle province, Premier Philippe Couillard takes the view that while “everyone knows” they sell coffee, the fact that the company uses “les cafés” in Québec is a recognition on the part of the retailer of the existence of French in Québec.

While there will apparently be no requirement to translate English language trade-marks, there will instead be a need to add descriptive or generic language in French.  Hence, once again, the Québec government is set to challenge the resistance of companies wishing not to use French on their English language signage in that province.

The CBC reports that the Retail Council of Canada has endorsed the move; however, it remains to be seen how companies, including the aforementioned retailers, will react.

Given the history and the nature of the businesses involved, we expect that there are more chapters to come in this story.

Managing the transition: the impact of Canada’s amended Trademarks Act on pending trade-mark applications

The recent amendments to Canada’s Trade-marks Act present many interesting opportunities and challenges to brand owners and their counsel.  This article focuses primarily on the impacts for Canadian trademark applications that are pending at the time the amended Act comes into force—that is, applications that have been filed with the Canadian Intellectual Property Office (CIPO) but that have not yet issued to registration.

As a preliminary comment, there is, unfortunately still no clarity about when the amendments to the Act will come into force. When the amending legislation was passed, CIPO initially indicated that the effective date could be as early as late 2014; subsequent projections were revised to mid-to-late 2015. More recent comments from CIPO suggest that mid-2016 is a more realistic timeframe.  The delay is apparently related to the magnitude of the IT changes required, particularly as connected to implementation of the Madrid  Protocol, to which Canada is becoming a party.

The amendments to the Act are set out in Bill C-31, which reached the last stage in the legislative approval process on June 19, 2014. Those amendments include a number of transitional provisions setting out the legislation’s varied impacts for both registrations and applications, including for applications at different stages of the examination process, as at the date the amended Act comes into force (the Implementation Date). We’ll look briefly at each of these in turn.

Registrations issued prior to the Implementation Date

Under the transition provisions, the amended Act will apply to registrations issued prior to the Implementation Date, with certain exceptions.  Most notably, following the Implementation Date the term of renewal for such registrations will be 10 years, as opposed to the 15 years provided under the current regime. The registration term is not being truncated for registrations issued prior to the Implementation Date; owners will have the benefit of their full 15-year registration terms. Upon renewal, however, only a 10-year term will be available. Of course, prior to the Implementation Date the current regime applies and owners can renew their registrations for 15-year terms.

This shift has led some owners to consider ‘early’ renewal, well in advance of the expiration of their existing registrations, in an effort to obtain the longer 15-year term. However, CIPO has indicated that if the registration anniversary falls after the Implementation Date, any renewal of the registration will be for a period of 10 years, regardless of whether the registered owner submitted the renewal fee and obtained a Certificate of Renewal from CIPO prior to the Implementation Date. CIPO takes this position despite its current practice of issuing renewal certificates at the time fees are paid (and not waiting for the anniversary of registration), with such certificates denoting a 15-year renewal term.  As part of the implementation process, CIPO officers have suggested these certificates may be revised to indicate that if the anniversary of registration falls after the Implementation Date, the registration period will be 10 years, despite other 15-year references on the certificate.

Applications that have been “allowed” prior to the Implementation Date

In the Canadian trademark system, once an application is “allowed”, it means that the application has been approved by a CIPO Examiner for advertisement in the Trade-marks Journal, it has been advertised in the Journal, that no one has filed a Statement of Opposition to that application (or if an Opposition has been commenced it Read more

Combating Counterfeit Products Act Receives Royal Assent

On December 9,2014 Royal Assent was given to Bill C-8, the Combating Counterfeit Products Act. The intention of Bill C-8 is to give the government and holders of trade-marks and copyrights new mechanisms for enforcement, along with substantial remedies, in order to combat counterfeit and black-market goods. Before the introduction of Bill C-8, Canada had been criticized for not having meaningful policies to combat the global problem of counterfeit trafficking which flowed across Canadian borders.

Specific enforcement mechanisms contained in Bill C-8 include:

  • new civil prohibitions under the Trade-marks Act and Copyright Act giving rights holders the ability to start civil actions against those who infringe their trade-mark or copyright by possessing, manufacturing, distributing or trafficking goods for commercial purposes;
  • new criminal offences under the Trade-marks Act and Copyright Act for possessing, manufacturing, distributing or trafficking counterfeit goods for commercial purposes;
  • new provisions giving customs officials ex officio power to independently seize and detain suspected counterfeit goods. This includes the ability for copyright and trade-mark owners to file a “request for assistance” with customs officials to increase the information available to customs regarding possible counterfeit goods.

For a deeper review of the changes contained in Bill C-8, please see our previous post written in March 2013 when the bill was first introduced as Bill C-56.

While the Bill has obtained Royal Assent, it is only partially in force. Changes currently in force include:

  • the introduction of the new criminal provisions;
  • the deletion of section 7(e) of the Trade-marks Act; and
  • amendments to Section 20 of the Trade-marks Act dealing with infringement.

The majority of the amendments to the Trade-marks Act and Copyright Act, including the provisions relating to importation and exportation and ex officio powers of custom officials, will be brought into force by regulation. It is not clear when this will occur. However, it is thought that implementation will be in step with Bill C-31, the Budget Implementation Act, which is also waiting to come into force sometime in 2015 early 2016 and contains further significant amendments to the Trade-marks Act.

We will keep you updated as coming into force dates are announced and these legal tools become available to trade-mark and copyright owners.

Canadian Intellectual Property Office posts proposed amendments to Trade-marks Regulations

The Canadian Intellectual Property Office has today posted proposed amendments to the Trade-marks Regulations at http://bit.ly/1xCOIEj  The consultation period for these proposed amendments is from October 1 to November 30, 2014.   As quoted in CIPO’s press release:

“The proposed regulatory amendments to the Trade-marks Regulations are required to enable Canada to accede to the Singapore Treaty on the Law of Trademarks, the Protocol relating to the Madrid Agreement concerning the International Registration of Marks and the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks.

The new regulations reflect the requirements of the trade-mark treaties and aim to increase legal certainty, streamline and clarify CIPO’s procedures, and align Canada’s trade-mark protection regime with international norms. The proposed amendments also include measures relating to the opposition regime and summary cancellation proceedings.”

 

CIPO’s acceptable wares and services entries: added to TMClass, made Trilateral friendly

CIPO has announced two interesting changes regarding its Wares and Services Manual.

TMClass

First, CIPO-approved entries have now been added to TMClass, a multi-jurisdictional database of acceptable goods and services claims maintained by  Europe’s Office for Harmonization in the Internal Market (OHIM).  TMClass now contains acceptable goods and services descriptions for nearly 40 different jurisdictions in 29 different languages, making it an increasingly useful resource for practitioners who are crafting IDs with an eye to minimizing or altogether avoiding local ID objections.

CIPO’s entries were added to the TMClass database on August 25, 2014, and are denoted in the database by a “CIPO – OPIC” tag.

Trilateral Partnership

Additionally, CIPO has now updated its own database to denote IDs  that are acceptable to local authorities in the US, Japan, Korea and under the OHIM regime.

By way of background, in 2009 CIPO signed a memorandum of co-operation with the “Trilateral Partners” – a loosely organized group of jurisdictions  who have worked to promote and effect harmonization in their IP registration systems over the last few decades.

The Memorandum saw CIPO join the Partners’ trademark identification project. The goal of the project was to create and maintain a list of IDs for goods and services that, if entered in an application for the registration of a trademark in any Partner country, would be accepted.

Read more

Official Marks Up For Review

A Private Members Bill was introduced in Canada’s federal parliament yesterday, which, if passed, will result in significant amendments to the official mark provisions in the Trade-marks ActSection 9(1)(n)(iii) of that Act currently sets out a very simple procedure whereby public authorities can attain official mark status for virtually any mark that they have adopted and used.  Once attained, official mark status prevents other parties from adopting, using or registering the same or a very similar mark in association with any wares (goods) or services, unless the public authority consents.  Under the current Act, official mark requests cannot be opposed, there is no specified term or renewal process for such status and there is no process for expunging an official mark if it is no longer in use, unless the public authority voluntarily abandons that status.

Bill C-611 would, if passed, add a definition of public authority to the Act and set out an opposition procedure for third parties to challenge official mark requests.  It would also provide for a 10 term for such status, with the ability to renew for further 10 year periods, each of which could also be opposed.

Time will tell if this Bill gains any traction.  The Member who introduced the Bill is with the minority Liberal party.  This Bill is unrelated to the wide ranging changes to the Act that are set out in Bill C-31.