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Proposed Amendments to the Trade-marks Regulations

April 26, 2012

The Canadian Intellectual Property Office (CIPO) has proposed amendments to the Trade-marks Regulations (Regulations) that would introduce significant procedural changes to trademark law in Canada, including the following:

1. Non-traditional marks - The proposed amendments include specific provision for the registration of non-traditional trademarks including holograms, motion marks, marks applied in a particular position on a three-dimensional object, and sound marks. Note: CIPO recently issued a Practice Notice stating that applications for the registration of trademarks consisting of sounds will be accepted effective immediately, pursuant to a recent order of the Federal Court. See “CIPO Comes Roaring into the Present: Sound Marks are Now Registrable.”

2. Amendment of applications - CIPO’s current restrictive practice would be considerably relaxed to allow for: (a) the pre-advertisement amendment to an earlier date of first use, without the requirement of filing evidence; (b) the pre-advertisement amendment to allege use or making known in Canada before the application’s filing date; and (c) the post-advertisement amendment to claim use as long as the claimed date of first use does not predate the filing of the application. However, the proposed amendments would make the post-advertisement correction of the applicant’s identity more difficult.

3. Opposition Practice - The proposed amendments would provide that both parties must complete any cross-examinations within four months after the filing of the opponent’s reply evidence. This would end the ability to delay the filing of evidence until after cross-examination of the other party’s affiants. Also, the amendments provide for the sequential filing of the opponent’s and then the applicant’s written submissions. The current practice is for both parties to file written submissions simultaneously.

4. Transfers - Currently, CIPO requires evidence of assignments and other transfers before it will record same. The proposed amendments would do away with this requirement, and a transfer would be recorded simply on the basis of a request for same.

CIPO recently concluded its consultation with stakeholders regarding these and a number of other proposed amendments to the Regulations – it will likely take at least a year for any amendments to be implemented.

Jonathan Burkinshaw, B.A., M.A., J.D., is an associate lawyer in Bereskin & Parr LLP's Trademark practice group. He can be reached in Toronto at 416.957.1623 or jburkinshaw@bereskinparr.com.

Terry Edwards, B.B.A., is a partner in Bereskin & Parr LLP's Trademark practice group. She can be reached in Toronto at 416.957.1614 or tedwards@bereskinparr.com.

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Author(s):

Jonathan Burkinshaw Jonathan Burkinshaw
B.A., M.A., J.D.
Partner
416.957.1623  email Jonathan Burkinshaw
Terry Edwards Terry Edwards
B.B.A.
Partner
416.957.1614  email Terry Edwards