July 2009

Can’t Stop, Won’t Stop: CIPO Changes Section 45 Procedures

By In Legislation, Registration

It’s been a busy year for CIPO, and the organization is yet again amending some of its practices.  This time it has s. 45 in its sights.

As regular readers know, s. 45 of the Trade-marks Act provides a mechanism by which an interested party can seek to summarily expunge a registered trade-mark for three years of non-use.  CIPO sought public input on a proposed changes to s. 45 practice earlier this year, and last week introduced its new practice notice, which is slated to come into effect on September 14, 2009.

Like the recent changes to Opposition proceedings, the changes to s. 45 practice appear aimed at streamlining the process.  Most notably, the planned changes limit the extensions of time available for the submission of evidence.  The current standard is an extension of three months with additional extensions available on consent or if exceptional circumstances are shown.  The new standard provides for one extension of four months, and establishes that grants of additional extensions will be rare: neither the the consent of the parties to additional extensions, nor the parties’ engagement in settlement discussions  will be seen by the Office as sufficient reason to provide additional time. Read more

Trademark Clearinghouse To Help Combat Cybersquatting?

By In Domain Name Disputes, Domain Names, Famous Marks, Protection & Enforcement

A story earlier this week reported that the Internet Corporation for Assigned Names and Numbers (ICANN) – the organization charged with oversight of the Internet, including the creation of new generic top level domains (gTLD’s) – is considering setting up a centralized database of trademarks to help combat cybersquatting and other negative domain name registration practices.  The proposed IP Clearinghouse would be a depository for trademarks and provide unified rules for trademark holders to block domain name registrations that include use of such trademarks, unless the applicant can prove that its proposed use will be legitimate.

This proposal will be closely monitored by the trademark community as ICANN continues to move forward with its controversial proposal to exponentially expand the number of gTLDs.  The concern of trademark holders is that the task of protecting their brands online, which is already difficult enough with the existing gTLDs, will become prohibitively expensive.

The idea of the IP Clearinghouse was one of the recommendations outlined in the Final Report on Trademark Protection of ICANN’s  Implementation Recommendation Team (IRT).  At the recent ICANN meeting in Sydney, the IRT presented its report. The IRT Final Report was open for public comment until June 29, 2009.   ICANN might not make a final decision on the idea until late 2009, at which time it could potentially decide on a variation of the IP Clearinghouse, depending on the public comments that it receives.

Though it appears to be a moving target at the moment, the launch of the new gTLDs could potentially take place as early as February or March of 2010.