Archive for the ‘Legislation’ Category
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Wednesday, January 13th, 2010
The Canadian Intellectual Property Office (CIPO) recently launched a new consultation on possible Canadian accession to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (the Madrid Protocol) and the Singapore Treaty on the Law of Trademarks (the Singapore Treaty).
This is not the first time CIPO has looked at the issue of Canada acceding to the Madrid Protocol. Five years ago a similar consultation took place. In response to a request for input, CIPO received feedback from the Intellectual Property Institute of Canada and from the International Trademark Association, though no further action was taken by CIPO at that time.
According to CIPO’s backgrounder to the current consultation, the intervening five years have seen important trading partners such as the United States join both the Madrid Protocol and the Singapore Treaty. As a result, according to CIPO, Canada is increasingly seen as isolated in its trademark laws and practices.
As many readers will be aware, the Madrid Protocol permits an applicant from a member country to file an application in its home country to register a trademark and to simultaneously file an international trademark application, under which the applicant designates other member countries in which the Applicant wishes to protect its mark. Registrability of marks covered by Madrid Protocol applications is still subject to the national laws of each member country that an international application is filed in.
The Singapore Treaty amends and expands on the Trademark Law Treaty of 1994 and aims to simplify and standardize many formalities and procedures relating to the administration of trademarks. It also covers new forms of marks, such as holograms, sound marks and smell marks. As with the Madrid Protocol, the Singapore Treaty does not affect substantive national trademark laws, such as the grounds on which applications for registration may be refused.
CIPO’s backgrounder seems to be slanted towards approval of both the Madrid Protocol and the Singapore Treaty, on the basis that they are necessary to align Canada’s trademark laws and procedures with “modern business practices”. Whether the benefits of these two treaties would outweigh the potential negative consequences and whether such benefits would accrue more to foreign applicants than to Canadian trademark owners, remains to be seen. While there are notable exceptions, Canadian brand owners tend not to file internationally as much as those from many other developed countries, such as the U.S. and the EU, and depending on various factors, the potential cost savings of filing under the Madrid Protocol generally arise only if an international application designates more than three member countries at the same time.
CIPO has asked for comments on its consultation to be submitted by March 15, 2010.
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Posted in Foreign Protection, Legislation, Registration | Comments Off
Wednesday, January 13th, 2010
Further to an earlier post, the Canadian Intellectual Property Office (“CIPO”) has announced a change in practice with respect to the granting of extensions of time in examination. This new Practice Notice will come into effect on March 11, 2010.
Currently, responses to examiner’s reports are due within six months of the date of issuance of the report. Under the changed practice, CIPO will grant an applicant one extension of time up to a maximum of six months to respond to the examiner’s report, “if the request is justified”.
Once 12 months from the date of the examiner’s initial report has expired, CIPO will require the applicant to demonstrate exceptional circumstances to justify why it is not possible to respond to all objections raised or requests made in the examiner’s report.
CIPO has provided a list of examples of what could constitute an exceptional circumstance to justify a further extension of time, as follows:
- recent change in trade-mark agent for the applicant
- circumstance beyond the control of the person concerned (e.g. illness, death, bankruptcy or other serious or unforeseen circumstances)
- recent assignment of the trade-mark
- certified copy of the corresponding foreign registration (for applications including a claim of registration and use abroad) is not available as the foreign application has not issued to registration
- if a cited co-pending and confusing application is the subject of an opposition proceeding initiated by the applicant or if the application is going to be abandoned with the next two months
- if the cited registered mark is subject to a summary expungement proceeding (under Section 45 of the Trade-marks Act) initiated by the applicant
- if the applicant is negotiating for the consent from the holder of a cited official mark
It appears from the text of the practice notice that this list is illustrative and not exhaustive.
While this streamlining should result in faster prosecution of trade-mark applications, the shortened time frames will mean that applicants and their agents must act quickly to prepare full responses to examiner’s reports.
However, the practice notice perhaps raises more issues than it answers. For example:
- When seeking the first six month request, CIPO indicates it will be granted where “the request is justified” – yet it is not clear what will constitute a justifiable request under this new regime.
- CIPO has not indicated what time frame it considers as “recent” (with respect to a change in agent or an assignment of mark).
- Section 45 proceedings are often initiated by agents (on behalf of applicants) rather than the applicant itself, in order to shield the identity of the agent’s client. However, it remains unclear if CIPO will grant a further extension on the above criteria if the Section 45 proceeding does not list the applicant as the requesting party.
- It is not clear if CIPO will require “proof” of negotiations between an applicant and the holder of an official mark for consent to the registration of the mark.
- There seems to be an element of subjectivity raised by the wording “could amount to an exceptional circumstance”.
As well, examiner’s reports are still paper-based and delivered by postal mail. If streamlining is indeed the goal, streamlining the method of delivery of examiner’s report to include email would aid in the process.
Time will tell if this new practice will result in more effective prosecution of applications or if this “streamlining” will cause more problems than it is intended to remedy.
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Posted in Legislation, Registration | Comments Off
Tuesday, December 29th, 2009
An Order in Council has amended Schedule 2 of the Olympic and Paralympic Marks Act to add 38 new marks to the prohibited marks list.
As noted in an earlier post, section 3 of the Act prohibits any person from adopting or using in connection with a business, as a trademark or otherwise, any mark that resembles an Olympic or Paralympic mark. Schedules 1 and 2 of the Act list the Olympic and Paralympic trademarks that are protected under the Act.
The additional marks added to Schedule 2 under the amendment include marks such as the Olympic mascots’ names (Miga, Mukmuk, Quatchi, and Sumi) and design marks representing pictograms for individual sports. These marks have apparently been in use for some time but were either not in use or not known at the time the Act was originally brought into force and therefore not included in the original Schedule 2.
As noted before, the main purpose of the Act is to prevent ambush marketing. Nonetheless, as we have reported in an earlier post regarding Lululemon’s recent clothing launch, businesses are finding creative ways to stay onside the letter of the law set out in the Act.
Posted in Branding, Legislation | Comments Off
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