Neil Melliship

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.

There’s Something About The 17th – The Tinkering Continues With More Canadian Trademark Practice Changes

By In CIPO, Legislation, Registration, Trademark Practice

The Canadian Intellectual Property Office (“CIPO”) has published amended Practice Notices and a Guidance document on Nice Classification, Divisional Applications and Temporary Appointment of Trademark Agents. Issued January 17, 2020, these changes have immediate effect and have material implications for prosecuting trademark applications at CIPO.

Read more in this Knowledge Bytes article.

 

Communication Breakdown: Canadian Quirks to Madrid Trademark Filing System that Foreign Applicants and their Counsel need to know

By In Foreign Protection, Legislation, Registration

Canada joining the Madrid international trademark filing system earlier this year came as welcome news to much of the international trademark community. Hidden in that euphoria however, are a couple of Canadian quirks that are likely to trip up unwary applicants and their foreign trademark Counsel.

This Knowledge Bytes article, reviews the limited Canadian Intellectual Property Office (CIPO) communications that will be sent to the World Intellectual Property Office (WIPO) and to foreign representatives of applicants who designate Canada in their applications for international registration. The bottom line is that a resident Canadian trademark agent should be appointed for all such applications, so that important communications from CIPO not go astray or languish, unattended, for an undue period of time.

LIVE is dead in the water – The Federal Court tackles another thorny trademark use decision

By In Case Law, Litigation, Protection & Enforcement, Registration

In a recent Federal Court Trial Division decision, the trademark registration for LIVE, registered in association with, among other things, hotel, entertainment and advertising services, was expunged for non-use during the relevant three year period.  The Court reviewed a number of conflicting decisions on the use of marks in Canada in the context of non-use cancellation proceedings, where the primary service is performed outside of Canada – for example, the relevant hotel or entertainment establishment is physically located outside Canada – but some ancillary or related aspect of the services could be said to be performed in Canada – for example reservations for the hotel or for tickets to the entertainment venue could be made by Canadians while physically located in Canada.

The Court reiterated that in order for there to be use of a mark in Canada, it is essential that some aspect of the services must be offered directly to Canadians or performed in Canada and that it must be demonstrated that people in Canada obtained “some tangible, meaningful, benefit” from the use of the Mark in association with the registered service.  In expunging the registration, the Court found that “simply holding a reservation for a hotel in the US is not a tangible and meaningful benefit enjoyed in Canada, despite that it may ensure that a room will be available upon arrival.  The tangible benefit occurs only once the person leaves Canada and travels to the US and fulfills the reservation.”  A similar conclusion was arrived at in relation to entertainment services.  The advertising services were not performed for any third party, meaning there was no trademark use.

Barring an appeal, the decision is noteworthy as it appears to be counter to a recent Federal Court decision involving hotel services provided in very similar circumstances.  In this case, the Judge distinguished the earlier decision, on the basis that “Unlike in Hilton, there are no rewards points that can be used in Canada. …Rewards points could not be earned in Canada or redeemed in Canada. There is no evidence of a tangible, meaningful benefit enjoyed in Canada from making an online reservation.“

Canadian Trademark eFiling Systems Outage from June 13 to 17, 2019 – What you need to be aware of

By In Legislation, Protection & Enforcement, Registration

The Canadian Intellectual Property Office will be taking its efiling systems for trademarks down from Thursday, June 13, 2019, at 00:00 EDT to Monday, June 17, 2019, at 06:00 EDT, for system upgrades and enhancements.

How does this affect Applicants and owners of  trademark Registrations in Canada?  Among other things, this outage will affect:
• e-Filing of new Trademark Applications;
• Registration of pending Applications; and
• Renewal of existing Registrations

Long awaited and significant changes to Canadian Trademark law – many of which have been previously discussed in this Blog – don’t come into force until June 17, 2019 (the CIF Date).  However, with the above systems outage, anyone hoping to file a new application or to renew an existing registration – with the intent of doing so under the current, lower pricing that is not tied to the number of Nice classes of goods/services covered – will need to do so prior to midnight (EDT) on June 12, 2019.  The same time limit applies to anyone hoping to finalize registration of an allowed application with the intent of obtaining a 15 year term, rather than the 10 year term available for registrations that issue after the CIF Date.

Please contact the author for more information or advice on the above.

No Going Back – Canada Formally Accedes to Singapore, Madrid and Nice Treaties

By In Legislation, Litigation, Registration, Trademark Oppositions

The Canadian Intellectual Property Office (CIPO) has announced that as of March 17, 2019, Canada has formally acceded to the Singapore Treaty, the Madrid Protocol and the Nice Agreement.  All three of these treaties will come into force in Canada on June 17, 2019.

According to CIPO “As of that date, trademark owners in Canada will be able to apply for trademark protection in more than 100 jurisdictions through a single application, in one language, with one set of fees and in one currency.”

June 17, 2019 will also be the coming into force date for numerous other significant changes to Canadian trademark practice.  Please see our recent post which explains some of the most important changes.  These are exciting times for trademark owners and their legal Counsel in Canada!

Delays Nourish Desires: Canada’s New Trademark Laws Come Into Force June 17, 2019

By In Foreign Protection, Legislation, Registration, Uncategorized

Earlier today, the Canadian Intellectual Property Office announced that long-anticipated amendments to Canada’s trademark laws will come into force on June 17, 2019.  It also published a new set of Trademarks Regulations, which will support those amendments.

First introduced in June of 2014, the amendments contain the most significant changes to Canada’s trademark law in decades, (discussed in earlier posts) including:

Read more