Consultations on Changes to Trade-Marks Office Practice
March 22, 2011
In the last two years, the Canadian Intellectual Property Office (CIPO) has been busy launching consultations and practice notices geared towards streamlining the Canadian trademark system and bringing it in line with international practice.
CIPO recently held consultations relating to Non-Traditional Marks, Registration/Recordal of Assignments and Other Transfers, and Document Retention and Disposal.
CIPO has traditionally taken the position that non-traditional marks (i.e. marks consisting of elements other than words, logos, devices, numerals and combinations thereof) are not registrable. The only non-traditional marks currently registrable are colour, but only when used as a feature of the trademark, and certain three-dimensional trademarks (other than distinguishing guises).
If adopted, the practice notice would recognize motion marks and holograms as falling within the definition of a trademark under the Trade-marks Act (the Act). This is a huge step for CIPO in terms of bringing Canadian practice in line with other jurisdictions. However, it is not clear why CIPO has chosen to focus on motion and hologram marks or whether other non-traditional marks, such as sound and smell marks, will follow. Interestingly, although motion marks and holograms have not traditionally been registrable, CIPO takes the position that this practice notice does not change the law, but simply clarifies the examination practice.
Recordal of Assignments
CIPO aims to “simplify and expedite” the process of recording assignments through the use of standardized forms, as opposed to the filing of assignments and other transfer documents. The concern with this proposal is that CIPO will have to take the form at face value, since there is no requirement to file a corroborating legal document.
Document Retention and Disposal
The consultation proposed that all paper files relating to applications that have been refused or abandoned, and registrations that have been expunged, be disposed of six years after refusal, abandonment, expungement, or the date of a final judgment in an appeal.
Electronic records in the Canadian Trade-marks Database would be retained and would continue to be made available on CIPO’s website. However, since the Canadian Trade-marks Database, unlike its U.S. counterpart, does not allow for electronic document retrieval, a wealth of information would be lost. File histories associated with abandoned applications and expunged registrations often prove to be an invaluable tool in prosecution (in terms of providing access to a party’s submissions), on issues of confusion or co-existence, in preparing evidence in cancellation and opposition proceedings, as well as in litigation. As the Act now requires that all applications, including abandoned applications, be open to public inspection, any change with respect to document retention would appear to be beyond the scope of a practice notice, and should be dealt with through legislative amendment.
The consultation period has now ended for all three issues above. Whether these proposed changes in practice will be implemented remains to be seen.
In addition, CIPO has, within the last few weeks, sought comments regarding examination practices in connection with: name or surname objections raised pursuant to Paragraph 12(1)(a) of the Act; compliance with Federal and Provincial legislation, pursuant to Paragraph 30(i) of the Act; and the relevant date for demonstrating that a trademark is “not without distinctive character” in Canada, pursuant to Section 14 of the Act.
Name or Surname Objection
CIPO’s current practice is to only raise a name or surname objection during examination if there are at least 25 entries for that name or surname in Canadian telephone directories or if the name pertains to a famous individual. CIPO is seeking input as to whether this threshold or “famous individual” requirement ought to be revisited, as well as other criteria for raising such an objection.
Paragraph 30(i) of the Act requires that a trademark application contain “a statement that the applicant is satisfied that he is entitled to use the trade-mark in Canada in association with the wares or services described in the application.” Under current CIPO practice, with the exception of a few Federal and Provincial Acts (such as the Bank Act and the Canada Post Corporation Act), at the examination stage, an objection will generally not be raised for non-compliance with Federal or Provincial legislation. CIPO is seeking input regarding whether the scope of the application of Paragraph 30(i) ought to be expanded or narrowed in this regard.
Relevant Date Under Section 14
Section 14 allows foreign applicants to obtain registration of a trademark that is either primarily merely a name or surname or clearly descriptive if they have a corresponding foreign registration and can demonstrate that the mark is “not without distinctive character” in Canada. The Trade-marks Opposition Board has taken the position that, in order to rely on the benefit of Section 14, the foreign registration must have issued before the Canadian application is filed. Despite the case law, at the examination stage, CIPO has continued to permit applicants to rely on Section 14 regardless of when the foreign registration issued. This creates a potential ground of opposition if the foreign registration did not issue until after the Canadian filing date. CIPO is now seeking comments on the scope of Section 14.
Terry Edwards, B.B.A., is a partner in Bereskin & Parr LLP's Trademark Practice group.
Meghan Dillon, B.Sc. (Psych.), LL.B., is an associate lawyer in Bereskin & Parr LLP's Trademark Practice group.
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