Jeffrey Vicq

CIPO targets Canadian trademark prosecution backlog

By In CIPO, Foreign Protection, Legislation, Registration, Trademark Practice

The Canadian Intellectual Property Office (CIPO) published two new Practice Notices on May 3, 2021, aimed at tackling the impact of its significant and growing backlog of Canadian trademark applications filed under the national, as opposed to the Madrid, system.  Following Canada’s June 2019 accession to the Madrid Protocol system for filing trademark applications in multiple jurisdictions at the same time, applicants who file applications in Canada using the national, non-Madrid system have experienced increasingly lengthy delays in the initial and subsequent prosecution of their applications.

The average time, from the date of filing an application under the non-Madrid system to first examination, is currently in the 28 – 30 month range – and there are fears that delay may increase over the next few years.  This stands in stark contrast to applications designating Canada pursuant to the Madrid system, which under the terms of Canada’s accession to Madrid, must be examined within 18 months of filing.  The reasons behind this significant difference are varied and complex.  While it certainly wasn’t CIPO’s intention or desire, a two tiered system has arisen, with applicants who make direct national filings in Canada being significantly disadvantaged in contrast to those applicants who are able to utilize the Madrid system.

To its credit, CIPO has recognized the untenable situation that has arisen.  The publication of these two Practice Notices is an attempt by CIPO to correct course.

Expedited Examination Requests – The first Practice Notice provides that CIPO will begin accepting requests for expedited examination of trademark applications.  The reasons justifying the grant of such a request include:

  • the applicant requiring registration of its trademark in order to protect its intellectual property rights from being severely disadvantaged on online marketplaces;
  • a pending or anticipated court action in Canada with respect to the trademark; and
  • the applicant being in the midst of combatting counterfeit products bearing the trademark at the Canadian border.

It remains to be seen how much of CIPO’s already limited examination resources will be diverted away from prosecution of applications to responding to requests for expedited examination.  It should be noted that this new provision for expedited examination requests is in addition to the ability to request expedited examination of applications for marks that include goods or services related to COVID-19.

Measures To Speed Up Examination – The second Practice Notice sets out three specific measures that CIPO has adopted to speed up processing of applications.  First, Examiners will now provide fewer examples of goods and services descriptions that would be considered acceptable when issuing an objection to such descriptions.  The second is that priority will be given to applications that include statements of goods/services that are selected from a pre-approved list.  The third measure will see Examiners being required to maintain a particular submission or argument only once.  If an applicant’s response to an initial Examiner’s Report doesn’t adequately address all of the Examiner’s objections, a final refusal will be issued rather than another Examiner’s Report maintaining the initial objection.  The impetus is now on applicants and their counsel to advance all arguments in response to an Examiner’s Report, rather than piecemeal.

The efficacy of the above measures will take time to play out and the proof will be in the proverbial pudding.  Watch this space for updates on CIPO’s progress in reducing its trademark prosecution backlogs.

CIPO Issues Notice of Final Blanket Extension (for now)

By In CIPO, Legislation, Trademark Practice

The Canadian Intellectual Property Office has just published notice of its decision to further extend the “designated days” period on account of continuing COVID-19 disruptions. Since the onset of the pandemic in Canada in early March, CIPO has issued nine such notices, effectively creating a “blanket extension” of all CIPO deadlines arising since then.  This latest extension will expire on August 21, 2020, which means all deadlines falling between March 16 and August 23 will now come due on August 24—assuming, of course, they haven’t already been addressed.

In a departure from its prior notices, CIPO has indicated that this is the last blanket extension it intends to grant for the time being. However, CIPO’s standard extension practice notice does provide for extensions of time in ‘exceptional’ circumstances that are ‘beyond the control of the person concerned’, so it may be possible for applicants to obtain further extensions on individual matters. Some explanation of unique hardship, however, will likely be necessary to justify the extension request; pointing merely to the existence of the pandemic will likely not suffice. Careful, case-by-case consideration should be given to the deadline faced to ensure the appropriate response.

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

By In Legislation, Registration

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

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

By In Legislation, Protection & Enforcement

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

Warm wishes – and thanks

By In Uncategorized

On behalf of the Canadian Trademark Blog team, please accept our warmest wishes for a happy and prosperous new year.   We plan to do our best to continue providing timely trademark-related information and insight, through 2013 and beyond.

Special thanks to you, our visitors, for your continued readership – and for making us one of the top 10 intellectual property and technology-related blogs in the country.  We know many of you have been with us since our start over six years ago, and we certainly value your support and interest.

Happy new year.

CIPO Wares and Services Manual Contracts Again

By In Legislation, Registration

In an update to this story, this morning CIPO announced its discovery that a number of the entries it added to the Wares and Services Manual as a result of Canada’s participation in the trademark identification harmonization project conducted by the Trilateral Partners do not comply with Canadian trademark requirements.

As such, the over 12,000 Trilateral-approved entries that were added to the Wares and Services Manual yesterday are being removed today.  CIPO has provided no official word on possible solutions, or a timetable for the (re)implementation of Trilateral-approved identification entries.

Bigger! Better! Wares and Services Manual Expands

By In Legislation, Registration

After a long wait, Canadian practitioners were delighted to learn this morning that CIPO has finally approved and activated more than 12,000 new entries in the Wares and Services Manual.

By way of background, in 2009 CIPO signed a memorandum of co-operation with the United States Patent and Trademarks Office, the Japan Patent Office and the Office for the Harmonization of the Internal Market (responsible for overseeing the CTM system).  These entities – known as the Trilateral Partners – have worked in a loose association over the last few decades to promote and effect harmonization in their IP registration systems.

The Memorandum saw CIPO join the Trilateral Partners’ trademark identification project: the Partners maintain a list of identifications of goods and services that, if entered in an application for the registration of a trademark in any Partner country, will be accepted in that country.

As a condition of its accession to the Memorandum, Canada was permitted to assess the Trilateral list, and to reject a small percentage of identifications that it did not believe reflected Canadian requirements.  With today’s announcement, that process is now complete, and the acceptable terms have been added to the Wares and Services Manual.