Jan 12, 2024 (Newsletter Issue 1/24)New Service Standards for Trademarks in EffectNew and more realistic service standards for trademarks came into effect on January 1, 2024. The amendments by the Canadian Intellectual Property Office (CIPO) aim at better reflecting examination time and at increasing predictability for applicants.
The amendments significantly lengthen the previous service standards but will not result in a lengthening of the trademark registration process.
For more details click here.
Source: www.stikeman.com Jan 12, 2024 (Newsletter Issue 1/24)Trademark Fees IncreasedAs announced earlier, the Canadian Intellectual Property Office (CIPO) has increased most of its fees by 25% as of January 1, 2024.
For more details click here.Source: www.groupetcj.ca Oct 20, 2023 (Newsletter Issue 8/23)Upcoming Changes to the Practice On December 1, 2023, there will be changes to the practice in trademark opposition proceedings and in Section 45 proceedings in Canada. To ensure faster and more efficient procedures, the Trademarks Opposition Board (TMOB) has decided to reduce the current benchmarks for extensions of time and the cooling off period.
For further information, please check the article of Therrien Couture Joli-Coeur, our Country Index Partner for Canada hereSource: Therrien Couture Joli-Coeur LLP Jun 22, 2023 (Newsletter Issue 6/23)
Official Fees to Increase
As of January 1st, 2024, the Canadian Intellectual Property Office (CIPO) is increasing most of its fees by approximately 25%. The regulations detailing the adjustment of patent, trademark, copyright and industrial design fees were published in the Canadian Gazette, Part II on June 21, 2023.
CIPO does not receive annual funding for its operations from the Government of Canada, but instead is fully funded through the revenue it generates from fees paid by applicants. With these fee adjustments, CIPO wants to address its current structural deficit.
For trademark owners, it is worthwhile to file their trademark application or to renew their registration in 2023. For example, the fees for filing a trademark application will increase from $347.35 CA to $458.00 CA for the first class and from $105.26 CA to $139.00 CA per additional class. The fees for the renewal of a trademark registration will increase from $421.02 CA to $555.00 CA for the first class and from $131.58 CA to $173.00 CA per additional class.
Source: https://ised-isde.canada.ca/site/canadian-intellectual-property-office/en/trademarks/fees-trademarks
Jul 01, 2021 (Newsletter Issue 13/21)Changes to French Language Laws Proposed by Quebec's Bill 96On May 13, the Quebec Government introduced Bill 96 - An Act respecting French, the official and common language of Québec that proposes significant changes to Quebec’s language laws. Once passed, Bill 96 would significantly strengthen French as the first language of commerce in Quebec.
Under the Trademarks Act, Quebec’s language laws allow for a trademark (e.g., a logo on an advertising poster) to be exclusively in another language as long as there were no versions of the mark registered in French (the "recognized Trademark" exception).
Under Bill 96, this exception is narrowed considerably. For example, if a company displays a trademark name in English using the current exception for recognized trademarks, it must ensure that the mark is "markedly predominant" in French and it may need to register for an updated trademark.
Further information can be seen here. The Bill 96 can be accessed here.Source: www.dickinson-wright.com Jul 01, 2021 (Newsletter Issue 13/21)New Independent Regulator for Patent and Trademark AgentsOn June 28, 2021, the Canadian Intellectual Property Office (CIPO) informs that the College of Patent Agents and Trademark Agents (CPATA) has been established and is officially in force as of June 28, 2021.
The College is now responsible for maintaining the registers of patent agents and trademark agents, administering patent and trademark agent qualifying examinations, collecting associated College fees, and conducting investigations and disciplinary proceedings.
Any agent whose name was entered in the register of patent agents in accordance with paragraph 22(a) of the Patent Rules or the list of trademark agents in accordance with paragraph 19(a) of the Trademark Regulations on the day prior to the coming-into-force day, was automatically transferred to the College's register of patent agents or register of trademark agents, as applicable, and shall be deemed to be issued a licence.
For further information, please check the article of Therrien Couture Joli-Coeur, our Country Index Partner for Canada here and on the CIPO website here Source: www.canada.ca; www.groupetcj.ca May 20, 2021 (Newsletter Issue 10/21)Practice Change in Examination Due to BacklogOn May 3, 2021, the Canadian Intellectual Property Office (CIPO) published two new practice notices: "Measures to improve timeliness in examination" and "Requests for expedited examination". The actions being taken by CIPO are in response to higher filings of trademark applications than anticipated. Effective immediately the following practices will be followed during the examination of a trademark application.
Measures to Improve Timeliness in Examination
- Suggestions related to acceptable goods or services: Examiners will provide fewer examples of goods or services that would be considered acceptable when issuing an examiner's report.
- Some applications will be examined more quickly: Applications which use only pre-approved goods or services from CIPO's Goods and Services Manual will be examined more quickly.
- Fewer examination reports prior to refusal: Examiners will reduce the number of reports issued to applicants and CIPO will reasonably refuse trademarks in a more timely manner. To this end, examiners will only be required to maintain a particular submission or argument once.
Requests for Expedited Examination
CIPO announced that the IP Office will begin accepting requests for expedited examination in the form of an affidavit or statutory declaration, by a person having knowledge of the facts, setting out the specific circumstances and reasons for the request.
The affidavit or statutory declaration must clearly set out how one or more of the following criteria are met:
- a court action is expected or underway;
- counterfeit products at the Canadian border will be combated;
- registration of a trademark is required due to strong disadvantage in online marketplaces; or
- registration of trademark is required to protect its priority claim within a certain period and after request by a foreign IP Office.
For more information, please click on the notice links above. Source: www.ic.gc.ca Feb 11, 2021 (Newsletter Issue 3/21)Communication Procedures by CIPO for International RegistrationsThe Canadian Intellectual Property Office (CIPO) has provided information to WIPO on the communication procedures followed by CIPO in respect of international registrations designating Canada.
Holders can communicate directly with CIPO as holders are not required to appoint a Canadian trademark agent to represent them before CIPO. If a trademark agent is appointed, CIPO can only communicate with a representative appointed before WIPO if this person is a Canadian trademark agent.
A courtesy letter is sent by CIPO to the agent when WIPO has notified CIPO of a designation of Canada in an international registration. In the event of a provisional refusal, both the holder and the agent may respond.
CIPO will send to WIPO all communications under Rules 17, 18ter and 19 of the Regulations under the Madrid Protocol, such as, statements of grant of protection, notifications of provisional refusal, statements concerning final or further decisions and notifications of invalidation.
Upon receipt of such communications from CIPO, WIPO will transmit a copy of them to the holder or to the appointed agent, if any. As a courtesy, CIPO will also send copies of these communications directly to the holder or to the agent. All other communications from CIPO will only be sent to the holder or agent.
More information on the notice, please click hereSource: www.wipo.int Feb 06, 2020 (Newsletter Issue 1/20)
Notice on Extensions of Time to Respond to Office Actions
The Canadian Intellectual Property Office changed its practice regarding extensions of time to respond to office actions.
As of January 17, 2020, an applicant will need to file a proper response or demonstrate exceptional circumstances to obtain an extension of time to file a response within the specified time in the office action.
If, at the expiry of the six month period after the date of the examiner's report, the applicant fails to file a proper response, or if the reasons provided in a request are not considered to justify an extension of time, the applicant will be considered in default in the prosecution of the application.
The following are examples of what could amount to an exceptional circumstance that would justify an extension of time:
- Recent change in trademark agent
- Circumstances beyond the control of the person concerned such as illness, accidents, death, bankruptcy, or other serious and unforeseen circumstances
- Transfer. There is a pending assignment filed at the Office and it would overcome a confusion objection.
- Opposition (the cited mark is the subject of a pending opposition Proceedings)
- Section 45 (summary expungement proceedings are pending against the cited mark)
- Official mark (when the applicant is negotiating a consent from the holder of an official mark)
- Division of a Protocol application
- Respond to a substantive objection that could lead to a refusal. The applicant may request an extension of time for this reason only once in the prosecution of the application
- Compile evidence of distinctiveness under subsection 32(1) of the Act. The applicant may request an extension of time for this reason only once in the prosecution of the application
This rule applies for an office action issued on or after January 17, 2020. For an office action issued prior to January 17, 2020, this practice does not apply, and an initial extension of time remains available without having to provide substantive reasons.
Source: Benoît & Côté, Canada
Sep 19, 2019 (Newsletter Issue 13/19)
Correspondence on International Registrations to Applicant/Canadian Agent Only
With regard to International Registrations, the Canadian Intellectual Property Office (CIPO) will send correspondence to the applicant or an appointed Canadian trademark agent only. This is in accordance with the new Trademarks Regulations which came into force on June 17, 2019.
In consequence CIPO is not required to send all the WIPO correspondence to the foreign agent. CIPO however, will issue a courtesy letter to the foreign representatives informing them that all future correspondence will be sent only to the applicant or appointed Canadian trademark agent.
Source: Benoit & Côté, www.benoit-cote.com
Aug 22, 2019 (Newsletter Issue 11/19)Practice Notices on Trademark Opposition IssuedOn June 17, 2019, the Canadian Intellectual Property Office (CIPO) has issued practice notices which provide guidance on current practices for trademark opposition proceedings and section 45 proceedings and the interpretation of relevant legislation.
The notices include the following topics:
- Navigating the Changes to Opposition and Section 45 Proceedings
- Practice in objection proceedings under section 11.13 of the Trademarks Act
- Practice in section 45 proceedings
- Practice in trademarks opposition proceedings
- Electronic evidence in opposition and section 45 proceedings
- Divisional applications in opposition
- Opposition to Protocol applications and section 45 cancellation proceedings against Protocol registrations
- Practice notice on amendment and deletion of use, proposed use, and use and registration abroad Claims
For more information, please click hereSource: www.ic.gc.ca Jun 06, 2019 (Newsletter Issue 7/19)Final Countdown to New Trademarks ActThe long-awaited new trademark regime will come into force on June 17, 2019. The Canadian Intellectual Property Office (CIPO) is preparing and informing of a blackout period for CIPO’s online services from June 13, 2019 at 00:00 am EDT to June 17, 2019 at 06:00 am EDT to adjust to the amendments that will soon come into force.
As reported earlier, these amendments impact all aspects of trademark selection, filing procedures, oppositions, registration and enforcement. Some of the important changes are below:
- Expansion of non-traditional marks
- Declarations of use no longer be required at the time of application
- Goods and services must be classified according to the Nice Agreement
- Introduction of a class-based fee structure
- Priority claims can be asserted from any prior application
- Ability to divide applications and registrations
- Reduction of term of protection from 15 years to 10 years
- Accession to the Madrid Protocol
- The new distinctiveness examination criteria will apply to all pending applications
For more information, check the overview table, which shows the changes of the old and new trademark system. The overview table was provided by the Canadian law firm Benoît & Côté.Source: www.ic.gc.ca Apr 04, 2019 (Newsletter Issue 5/19)Accession to Madrid Protocol / Nice Agreement / Singapore TreatyWIPO presents his compliments and has the honor to notify the deposit by the Government of Canada, on March 17, 2019, of its instrument of accession to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, adopted at Madrid on June 27, 1989 ("Madrid Protocol (1989)"), as amended on October 3, 2006, and on November 12, 2007. The said instrument contained the following declarations:
- in accordance with Article 5(2)(b) of the Madrid Protocol (1989), the time limit for a notification of refusal in respect of international registrations made under the Madrid Protocol will be 18 months and, under Article 5(2)(c) of the said Protocol, when a refusal of protection may result from an opposition to the granting of protection, such refusal may be notified to the International Bureau after the expiry of the 18-month time limit; and
- in accordance with Article 8(7)(a) of the Madrid Protocol (1989), the Government of Canada, in connection with each international registration in which it is mentioned under Article 3ter of the said Protocol, and in connection with the renewal of any such international registration, wants to receive, instead of a share in the revenue produced by the supplementary and complementary fees, an individual fee.
The Madrid Protocol will enter into force, with respect to Canada, on June 17, 2019.
Also, Canada joined the Nice Agreement and the Singapore Treaty which will enter into force on June 17, 2019.
For more information, please click on the respective links of the notices regarding the Madrid Protocol, Nice Agreement, and Singapore Treaty. Additional to that, the Canadian Intellectual Property Office provides a very good overview page of all the joined treaties which can be accessed hereSource: www.wipo.int Nov 30, 2018 (Newsletter Issue 20/18)New Trademark Regime Coming SoonOn November 14, 2018, the new Trademark Regulations were published in the Canada Gazette Part II, revealing that Canada's new trademark regime is set to be in force on June 17, 2019.
These amendments impact all aspects of trademark selection, filing procedures, oppositions, registration and enforcement. Some of the important changes are below:
- Expansion of non-traditional marks
- Declarations of use no longer be required at the time of application
- Goods and services must be classified according to the Nice Agreement
- Introduction of a class-based fee structure
- Priority claims can be asserted from any prior application
- Ability to divide applications and registrations
- Reduction of term of protection from 15 years to 10 years
- Accession to the Madrid Protocol
- The new distinctiveness examination criteria will apply to all pending applications
The Trademarks Regulations: SOR/2018-227 can be accessed hereSource: www.bereskinparr.com; www.gazette.gc.ca Nov 15, 2018 (Newsletter Issue 19/18)
Eighth Edition of Vienna Classification Implemented by CIPO
The Canadian Intellectual Property Office (CIPO) has implemented the classification schema in accordance with the Eighth Edition of the Vienna classification (VCL).
The updates will not impact the current layout of disseminated trademarks data, in the sense that no new data fields will be created. However, a number of trademark records will be reclassified to comply with the schema. The reclassification process will occur over a period of eight (8) weeks, starting the week of October 15, 2018.
Source: www.ic.gc.ca
Nov 15, 2018 (Newsletter Issue 19/18)New Industrial Design Office Practice Manual PublishedThe Canadian Intellectual Property Office (CIPO) announced the publication of the new Industrial Design Office Practice Manual (IDOP) that came into force on November 5, 2018.
The IDOP is an important tool for communicating CIPO's internal office practices and procedures to applicants and their agents; it is the primary public source for information on how to prosecute an application for the registration of an industrial design.
The IDOP sets out how CIPO will operationalize the legislative and regulatory changes necessary for Canada to accede to the Hague Agreement Concerning the International Registration of Industrial Designs (the Hague Agreement). Source: www.ic.gc.ca Nov 15, 2018Applications via Hague System for Industrial Designs Possible NowCanada has joined the Hague System as of November 5, 2018. Industrial design owners can now designate Canada in an international industrial design application.
The total number of Contracting Parties that can be designated in an international design application is now 69.
The application can be filed electronically hereSource: www.wipo.int Sep 20, 2018 (Newsletter Issue 16/18)
Accession to Hague Agreement for Industrial Designs
WIPO notifies the deposit by the Government of Canada, on July 16, 2018, of its instrument of accession to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs, adopted at Geneva on July 2, 1999 (the "Geneva Act").
The Geneva Act will enter into force on November 5, 2018.
Source: www.wipo.int
Sep 20, 2018 (Newsletter Issue 16/18)Modernization of CIPO's Online Practice ManualsThe Canadian Intellectual Property Office (CIPO) informs that they are modernizing their online practice manuals.
The Office asks for feedback on the BETA Manual of Patent Office Practice (MOPOP) and BETA Trademarks Examination Manual (TEM).
New Industrial Design Office Practice Manual (IDOP) will be available soon.
Feedback, questions or comments can be directed to the Client Service hereSource: www.ic.gc.ca Aug 22, 2018 (Newsletter Issue 14/18)Practice Notice on Special CharactersThe Canadian Intellectual Property Office (CIPO) published a practice notice in order to clarify its practice on special characters.
CIPO informs that special characters are those beyond the standard 26 letter Roman alphabet, numerals 0 to 9 and the following characters: & (ampersand), ˚ (degree) and % (percentage). Characters beyond those listed above, such as letters with accents (é, è, ö, etc.) and most Greek characters are considered special characters.
Some special characters cannot be entered in the database, nor can they be reliably reproduced in the Cover Page due to technical limitations.
Special characters appearing in names, titles or any other information that is transcribed into the database will be entered into CIPO's database according to the Special Character Conversion Table.
For more information and to access the Special Character Conversion Table, please click hereSource: www.ic.gc.ca Aug 22, 2018 (Newsletter Issue 14/18)
Accession to Madrid Protocol Soon
The Director General for Trademarks at the Canadian Intellectual Property Office announced the future accession of Canada to the Madrid Protocol. It is expected to join the treaty in early 2019.
Source: www.wipo.int
Jul 24, 2018 (Newsletter Issue 13/18)New Industrial Design Regulations PublishedOn June 27, 2018, the Government of Canada published new Industrial Design Regulations (the Regulations) in the Canada Gazette (Part II). Finalizing the Regulations is an important step toward Canada’s accession to the Hague Agreement and the modernisation of Canada’s domestic industrial design regime.
Canada’s Hague accession and industrial design regime modernisation agenda also includes amendments to the Industrial Design Act, revisions to the Industrial Design Office Practices manual and improvements in e-services for clients, coming into force on November 5, 2018.
For more information, please check hereSource: www.canada.ca Feb 28, 2018 (Newsletter Issue 4/18)Educational IP Roadmaps by CIPO PublishedThe Canadian Intellectual Property Office (CIPO) launched three intellectual property (IP) roadmaps.
These products aim to increase the understanding of the registration process for trademarks and industrial designs, and the granting process for patents.
For more information, please visit the CIPO IP ToolboxSource: www.ic.gc.ca Feb 28, 2018 (Newsletter Issue 4/18)Renewal of Registration on Agent RegisterThe Canadian Intellectual Property Office (CIPO) informs that patent and trademark agents have until April 3, 2018, to renew their registration on the register of patent agents and the list of trademark agents.
These lists are renewed on an annual basis as set out in subsection 16(1) of the Patent Rules and section 22 of the Trade-marks Regulations respectively.
Since the end of the renewal period, March 31, falls on a Saturday in 2018, the deadline is extended to the next day the Office is open - Tuesday, April 3.
Agents who fail to meet the renewal requirements before April 3, 2018, will be removed from the register of patent agents or from the list of trademark agents. In such cases, agents will need to pay the reinstatement and renewal fee. Further, trademark agents will also need to demonstrate that they have passed the qualifying examination.
For further information, also on the renewal process, please click hereSource: www.canada.ca Jul 11, 2017 (Newsletter Issue 13/17)Draft Trademark Regulations Open to Public Comment Until July 21The Canadian Intellectual Property Office recently released its draft Regulations under Canada's new Trademarks Act. They are open to public comment until July 21, 2017. This is the next step to the enactment of the amended Trademarks Act.
The proposed amendments to the Regulations are intended to facilitate Canada’s adherence to three international trademark treaties, namely the Singapore Treaty, the Nice Agreement, and the Madrid Protocol. They also clarify procedures and time frames for the filing and prosecution of Canadian trademark applications, as well as for opposition and section 45 proceedings.
The proposed amendments will implement a number of key changes in Canadian trademark practice also impacting foreign applicants.
Source: Joli-Coeur Lacasse Avocats, Canada Jun 28, 2017 (Newsletter Issue 12/17)Feedback on Proposed Industrial Design and TMs Regulations Required The Canadian Intellectual Property Office (CIPO) is seeking feedback on the proposed regulatory amendments to the Industrial Design Regulations, the Trade-marks Regulations and the Patent Rules.
The timeframe for the consultations are from:
- June 19 to July 14, 2017, on the proposed Industrial Design Regulations
- June 19 to July 21, 2017, on the proposed Trade-marks Regulations
The proposed Trade-marks Regulations draft which is designed to implement amendments to the Trademarks Act passed in 2014 and can be seen here, while the proposed Industrial Design Regulations can be accessed here
Comments can be sent to the email address 'ic.cipo-consultations-opic.ic@canada.ca', indicating in the subject line the Regulations to which the submission applies, i.e. Trademarks or Industrial Designs.
CIPO will make a consultation report available on their website following the close of the consultation period. All comments received will be considered public.
Source: www.ic.gc.ca Jun 28, 2017 (Newsletter Issue 12/17)Consultation Phase on NAFTA ExpandedThe Government of Canada has announced that they have expanded the online consultations with Canadians on the renegotiation of the North American Free Trade Agreement (NAFTA).
NAFTA includes a dedicated chapter (Chapter 17) on Intellectual Property (IP). As a result, the Government of Canada would encourage stakeholders with an interest in IP trade agreement rules to share their ideas, experiences and priorities on the modernisation of NAFTA by visiting www.international.gc.ca/nafta.
Alternatively, officials of the Government of Canada can be contacted via the email address 'Consultations-TMI@international.gc.ca'.
Source: www.international.gc.ca May 31, 2017 (Newsletter Issue 10/17)Practice Changes / Colour as a Registrable Feature of Industrial DesignThe Canadian Intellectual Property Office (CIPO) recently announced six changes to its Industrial Design Office (the Office) practices with the objectives of improving service to clients, reducing administrative burden, and modernizing our practices to align with international norms. The changes were based largely on feedback from the Industrial Design Practice Committee (IDPC).
The changes included the following:
- Computer-generated animated designs
- Colour as a registrable feature of an industrial design
- Reducing time limits to respond to office actions
- Search to assess originality where there is a priority claim
- New notices of possible refusal
- Delaying the registration of an application
Under the new practice, CIPO will accept color as registrable subject matter of an industrial design. In doing so, color will be permitted to be an additional feature in combination with the features of shape, configuration, pattern or ornament and any combination thereof.
Drawings or photographs filed in respect of an application for registration of a design that includes colour as a feature must be filed in paper form and in colour. Current technical limitations prevent the Office from accepting colour drawings or photographs in electronic form. The Office will scan the paper drawings or photographs to display them in colour on the online Industrial Design Database and in registration packages. In the event of a discrepancy between the colour in the paper file that was submitted to the Office and the colour displayed online or in the registration packages, the paper file will be considered to be the best representation of that colour.
More information can be accessed here
Source: www.ic.gc.ca Apr 26, 2017 (Newsletter Issue 8/17)Modernised Trademarks Database ReleasedThe Canadian Intellectual Property Office (CIPO) informs that a modernised Canadian trademarks database has been released designed to improve the database functionalities by offering:
- redesigned layout and navigation
- single search interface
- refined search capabilities
- separate bilingual search tab
- restructured trademark details
The database can be accessed here
Source: www.ic.gc.ca Apr 26, 2017 (Newsletter Issue 8/17)Decisions on Opposition/Section 45 Proceedings Made Accessible NowThe Canadian Intellectual Property Office (CIPO) informs that decisions by the Registrar of Trade-marks on opposition and section 45 proceedings are available on Decisia.
Decisia is a web application for tribunals and boards, and is already used by several federal organizations to publish their legal decisions.
It will be possible to conduct exhaustive and advanced searches of decisions by the Registrar of Trade-marks with the web application. Also it will now be possible to do searches by member, hearing officer, application number, registration number and trademark.
To access the web application, please click here
Source: www.ic.gc.ca Mar 29, 2017 (Newsletter Issue 6/17)
Reform to Trademarks Act Further Postponed
The Director General of the Trademarks Branch of the Canadian Intellectual Property Office has advised that the sweeping and ambitious reforms to Canada’s Trade-marks Act are now expected to come into force in early 2019.
Source: Gowling WLG, Canada
Jan 25, 2017 (Newsletter Issue 2/17)
CIPO To Start Inviting Classifications of Goods and Services In TM Applications
The Canadian Intellectual Property Office (CIPO) has been permitting applicants to voluntarily classify their goods and services in recently filed and pending applications. In addition, CIPO announced that it will shortly start inviting owners of existing trademark registrations to classify the goods and services contained in their registrations according to the Nice Classification System. Courtesy notices to this effect are expected to be delivered as early as this month to trademark owners whose registrations are due for renewal on or after January 1, 2018. Where the registration lists a representative for service, the notice will be sent to the listed representative. Where no representative is listed, the notice will be sent directly to the owner.
Owners of registered trademarks are not obliged to respond to these courtesy notices at this time and there is presently no requirement in Canada that goods and services be categorized according to the Nice Classification. However, once classification does become obligatory, goods and services in existing registrations will have to be classified before the registrations can be renewed and goods and services in new or pending applications will require classification before the applications can proceed to registration.
Source: Gowling WLG, Canada
Jan 25, 2017 (Newsletter Issue 2/17)Office Practices of Industrial Design ChangedThe Canadian Intellectual Property Office (CIPO) announced changes to six industrial design office practices.
The changes will improve service to clients, reduce administrative burden, and modernize our practices to align with international norms.
The practice changes are related to:
- applications for protection of computer-generated animated designs
- colour as a registrable feature of an industrial design
- time limits to respond to office actions
- the search to assess the originality of an application where there is a priority claim
- the issuance of notices of possible refusal
- delaying the registration of an application
A fact sheet providing an overview of the changes is also available.
For more information, please click here
Source: www.ic.gc.ca Nov 22, 2016 (Newsletter Issue 21/16)Non-French TMs on Public Signs to be Accompanied by French DescriptionThe Quebec Minister of Culture and Communications has announced that proposed amendments to the regulations under the Charter of the French Language will come into force on November 24, 2016. The amendments are intended to ensure the presence of French language on the storefront of businesses that display non-French trademarks on public signs, while purporting to respect the trademark exception.
The amendments provide that where a non-French trademark appears on a public sign, such must be accompanied by a generic term or a description of the products or services concerned, a slogan or any other indication in French informing consumers and passersby of the products or services offered. An appropriate display would give a permanent visibility to French, similar to that of the non-French trademark displayed and also be legible together with the non-French trademark. However, the display in the French language is not required to be at the same place, in the same number, in the same materials or in the same size as the non-French trademark.
The new regulations will apply to all new signage as of November 24, 2016. For existing signage, the regulations provide a 3-year grace period for business owners to comply.
For more information, please check here.
In parallel, the Office québecois de la langue française has prepared two illustrative guides that will be distributed to all businesses in Quebec. The first guide specifically deals with the display of trademarks, including the obligations with regard to the public display of trademarks exclusively in a language other than French, while the second guide addresses the general linguistic obligations of businesses.
Source: Smart & Biggar/Fetherstonhaugh, Canada
Nov 22, 2016 (Newsletter Issue 21/16)Practice Notice on Geographical Marks ReleasedOn November 9, 2016, the Canadian Intellectual Property Office (CIPO) released a practice notice in order to clarify its interpretation of paragraph 12(1)(b) of the Canadian Trade-marks Act when applied for evaluating the registrability of trademarks with a geographical name.
CIPO’s notice states that, in accordance with the 2016 Federal Court of Appeal’s decision in MC Imports Inc. v. AFOD Ltd., a trademark is clearly descriptive of the place of origin if the trademark, whether depicted, written or sounded, is a geographic name and the associated goods or services originate from the location of the geographic name. Therefore, such trademark could not be registered in Canada.
Furthermore, a trademark will not be registrable under paragraph 12(1)(b) if it is deceptively misdescriptive.
Finally, if the registrar determines that the trademark is a geographic name, the applicant will have to confirm to the CIPO the actual place of origin of the associated goods or services. The notice also states that the address of an applicant is irrelevant when evaluating the place of origin of the associated goods or services.
Source: Joli-Coeur Lacasse Avocats, Canada
Jun 28, 2016 (Newsletter Issue 12/16)Consultations on Proposed Changes to Official FeesThe Canadian Intellectual Property Office (CIPO) opens consultations on proposed adjustments to trademark and patent fees.
To address these changes, CIPO is now consulting on proposed adjustments to the trademark and patent fees and their related service standards. Under the User Fees Act, all new fees and services set by the Government of Canada must be established in accordance with the process set out in the legislation from the amendments to the Canadian Trademarks Act and Patent Act.
The Office welcomes feedback to July 5, 2016 on trademarks and patents.
Source: www.ic.gc.ca Mar 02, 2016 (Newsletter Issue 4/16)E-Copies of Trademarks DocumentsThe Canadian Intellectual Property Office (CIPO) is offering a new service with respect to trademark, copyright and industrial design document requests. You now have the option to receive uncertified electronic copies (CD-ROM or email) of trademark, copyright and industrial design files. The new service complements an existing service for patent related documents.
Electronic copies can be requested via the web order form here. Once the confirmation of payment is received, CIPO sends an email or a CD-ROM within three business days. Fees for this new service are outlined on the Products and Services page.
Source: www.ic.gc.ca and Joli-Coeur Lacasse Avocats, Canada
Feb 02, 2016 (Newsletter Issue 2/16)CIPO Invites the Public for ConsultationThe Canadian Intellectual Property Office (CIPO) informed that they will be consulting on various themes that will help to modernize the Canadian intellectual property regime on topics such as intellectual property regulations and laws, business practices and international harmonization.
The first consultation focusses on principles guiding the harmonization of substantive patent law. The public is invited to submit comments from January 19 to March 23, 2016.
For more information, please visit the consultations and discussions page here
Source: www.ic.gc.ca Nov 11, 2015 (Newsletter Issue 17/15)Implementation of Trademarks Act PostponedThe Canadian Trademarks Office recently announced that the amendments to the Trademarks Act will not come into force until at least the beginning of 2018. It was initially believed that the amendments would be earlier.
Under the current Act, applicants need to file a Declaration of Use when they file an application on a basis of proposed use in order to obtain their certificate of registration. The new Act will eliminate this requirement. In the event that the Declaration of Use has not been filed yet, an extension of time needs to be requested until the new law comes into force.
For further information please check the article of our Country Index partner Joli-Coeur Lacasse Avocats here
Source: Joli-Coeur Lacasse Avocats, Canada
Sep 29, 2015 (Newsletter Issue 15/15)Modernization of IP framework in ProgressCIPO published on its website how the trademark landscape is changing. The intellectual property laws are being modernized, including the Trade-Marks Act. Specifically, Bill C-8 — Combating Counterfeit Products Act, Bill C-31 — Budget Implementation Act 2014 (which includes accession to the Nice Agreement, the Singapore Treaty and the Madrid Protocol) and more recently Bill C-59 — Budget Implementation Act 2015, which will allow Canada to be better aligned with international practices.
Further, starting from September 28, 2015, CIPO will begin to accept trademarks applications voluntarily filed with their goods and services grouped and classed according to the Nice Classification. Using the Nice classification at CIPO will be optional and non-mandatory until the coming into force of C-31.
For further information on the Nice classification please check the article of our Country Index partner Joli-Coeur Lacasse Avocats here
Check further information on Trademarks legislative changes and international treaties and Update to the trademarks online tools.
Source: www.ic.gc.ca and Joli-Coeur Lacasse Avocats, Canada Jul 28, 2015 (Newsletter Issue 12/15)
Renewal of CIPO's Online Applications Soon
At the end of July and end of August, the Canadian Intellectual Property Office (CIPO) will release revamped online applications as part of a series of planned improvements to modernize the online services.
The applications will be accessible to a wider range of people, easier to use, and will be optimized for mobile devices. While some applications are only being updated to a new look-and-feel, the following applications will go through more extensive improvements:
- Trademarks (Request to Enter a New Name on the List of Trademark Agents)
- Copyright (Filing a grant of interest, Request a certificate of correction, General Correspondence)
- Industrial Designs (Industrial Design E-Filing, General Correspondence)
- Patents (Filing Canadian Patent Applications, The Canadian Patent Office Record (CPOR), General Correspondence)
The Client Service Centre information officers are available Monday to Friday, from 8:30 a.m. to 5 p.m. (local time) to answer questions during the transition period.
Source: www.ic.gc.ca
Jul 28, 2015 (Newsletter Issue 12/15)Nice Classification ExpectedThe Canadian Intellectual Property Office (CIPO) has recently announced that, starting from this fall, it will be possible to file trademark applications using goods and services grouped and classed under the Nice Classification.
Online tools will be improved to enable the use of the Nice Classification. Key enhancements include:
- Redesigned layout and navigation of the Goods and Services Manual that will provide assistance in selecting the appropriate classification to apply to goods and services; and
- New and improved search capabilities, which will give the user the ability to search the database for marks filed within a particular class of goods and services and see if there is overlap in the same general category.
CIPO expects that the implementation of the Nice Classification will help applicants and the agent community with the transition from the current trademarks regime to the new provisions — coming into force with the accession to the Nice Agreement, the Singapore Treaty and the Madrid Protocol.
For more information, please also check the article of Micheline Dessureault, Joli-Cœur Lacasse Avocats from Canada.
Source: Joli-Cœur Lacasse Avocats, Canada and www.ic.gc.ca Oct 14, 2014 (Newsletter Issue 15/14)Consultation to Modernize Canada's Intellectual PropertyThe Canadian Intellectual Property Office (CIPO) will be holding an official consultation on the report entitled Modernizing the IP Community from 9 October to 9 December 2014.
As part of the Government of Canada’s efforts to support innovation, significant efforts have been made to better align Canada’s intellectual property (IP) framework with international practices and reduce the administrative burden for Canadian businesses. CIPO has also been working to transform its services to more effectively support businesses’ innovative undertakings. These efforts have coincided with the ongoing interest of the IP agent community to deliver the best services possible to Canadian businesses.
Within this environment, CIPO and the IP agent community recognized the importance of modernizing the way in which they do business together to support the needs of Canadian businesses. A collaborative effort between CIPO and the IP professional community was initiated to examine and develop recommendations in three areas:
1. The maintenance and oversight of the register/list of trademark and patent agents.
2. The qualification and maintenance of patent and trademark agents on the register/list.
3. A values and ethics framework for trademark and patent agents.
CIPO is seeking views to assess the degree to which the recommendations contained in the final report, Modernizing the IP Community, meet the needs of the business community and the IP professional community.
For more details, please see the consultation document. For further information on the latest developments in the field of Canadian Intellectual Property, please access the article of our Canadian partner Joli-Coeur Lacasse Avocats here
For any questions regarding this consultation, please send an email to Konstantinos Georgaras (Email: OPIC-CIPO.consutlations@ic.gc.ca).
Source: www.cipo.ic.gc.ca Jul 04, 2014 (Newsletter Issue 11/14)Changes to Canadian TM Act ExpectedThe new draft law (Bill C-31), encompassing the first major reform of the Canadian Trademarks Act in over 60 years, has now received the Royal Assent on 19 June 2014 and will thus become law without any further amendments.
Major changes have been made to the Law that will enable Canada to ratify, amongst other the Madrid Protocol, the Singapore Treaty and the Nice Agreement. Some of the various changes are expected that may negatively impact trademark protection strategies:
- Proof of use will no longer be required to obtain registration in Canada.
- Trademark protection duration will be reduced from 15 years at the moment to 10 years.
- As the Canadian Government implements the Nice classification, it is highly possible that the Canadian Government will base its government fees on each separate class.
For further information, please access the article of our partner Ms Micheline Dessureault from the law firm Joli-Coeur Lacasse Avocats here
Source: Joli-Coeur Lacasse Avocats, Canada Apr 16, 2014 (Newsletter Issue 7/14)New E-Filing System LaunchedThe Canadian Intellectual Property Office (CIPO) has launched a new e-filing system on 31 March 2014. Applicants can submit new and revised online applications for ordinary trademarks, certifications marks and distinguishing guises via the new system.
The old system has been decommissioned. A user guide is available upon request. For further information, please click here
Source: www.cipo.ic.gc.ca Sep 17, 2013 (Newsletter Issue 13/13)Expedited Examinations Abolished A new Notice of Practice has been published on June 14th, 2013 by the Canadian Intellectual Property Office regarding requests for expedited examinations.
It has been decided that the Registrar will no longer consider and accept requests for expedited examinations, given that examination now generally occurs within six (6) months of the application.
This previous Notice of Practice on this matter was published February 23rd, 2000. This Notice of Practice is no longer available on the CIPO website. Back then, examinations could take up to 28 months, creating the need for expedited examinations. Requests for expedited examinations had to be in the form of an affidavit or statutory declarations. Since examination delays are much shorter now, expedited examinations have been abolished. The current turnaround time seems to realistically be between six (6) to eight (8) months.
Source: Source: Joli-Coeur Lacasse Avocats, Canada Jul 16, 2013 (Newsletter Issue 11/13)New Trademark Examination ManualThe Canadian Intellectual Property Office has released the new version of its Trademarks Examination Manual. The new version can be accessed here
Source: Robic LLP, Canada
Mar 12, 2013 (Newsletter Issue 3/13)Elimination of Deposit Account Replenishment by Credit CardThe Canadian Intellectual Property Office (CIPO) announced that CIPO has been looking for ways to reduce the merchant fees associated with the acceptance of credit cards. To help achieve this goal, CIPO will be eliminating the option to replenish a deposit account by credit card as of April 1, 2013.
After April 1, deposit account replenishment can be completed by using one of the following payment options: on-line banking, wire transfer, cheque, money order, debit card or cash (in person at Headquarters only).
Credit card payments will continue to be accepted for individual services when payment is made electronically, or when made in person, by facsimile or by mail using the CIPO Fee Payment Form.
For more information on payment options, please click here
Source: www.cipo.ic.gc.ca Feb 18, 2013 (Newsletter Issue 2/13)
Online Banking Available
The Canadian Intellectual Property Office (CIPO) announced that CIPO's deposit account holders will be able to replenish their account via the online banking system of all major Canadian banks in February 2013.
This modern, convenient and flexible option will offer CIPO clients numerous benefits, including: system validation of the client number to reduce the chance of possible errors, minimal user fees per transaction, secure transmission, and storage of deposit account replenishment information. Detailed instructions will be provided once the online banking service is available
Use of online banking will be limited to clients who are currently registered to use CIPO's online electronic statements service to view their credit card and deposit account transactions. Clients who are not currently registered should contact CIPO's Finance Branch in writing for instructions on how to access their online electronic statements.
Source: www.cipo.ic.gc.ca
Nov 01, 2012 (Newsletter Issue 16/12)Extension of Time Justification Online AvailableThe Canadian Intellectual Property Office (CIPO) announced that a copy of the applicant's justification to support a request for extension of time to file a Declaration of Use is now available via the web application for registration of a trademark.
The justification can be previewed and printed prior to submitting it to the Office. The document will remain accessible through the Transaction Requests History page along with the Extension of Time acknowledgement notice.
For more information on this online enhancement, please contact the Trade-Marks Branch Business Services here
Source: www.cipo.ic.gc.ca Sep 27, 2012 (Newsletter Issue 14/12)
Deposit Account/Credit Card Statements
The Canadian Intellectual Property Office (CIPO) announced that it's clients can now access their deposit account and credit card statements securely on CIPO's website. Clients will now be able to manage and track their own IP service request financial activity through their online statements.
In order to view the online statements, CIPO's Finance Branch must be contacted in writing to link the deposit accounts and/or credit card account to the authorized Industry Canada User(s) in your firm. The name of your firm, deposit account number(s) if applicable, and Industry Canada username(s) need to be included. The request can be sent to cipo.finance.opic@ic.gc.ca
Source: www.cipo.ic.gc.ca
Apr 17, 2012 (Newsletter Issue 6/12)Sound Marks Now RegistrableThe Canadian Intellectual Property Office announced in its Practice Notice dated March 28, 2012, that they are accepting sound-based trademark applications. Previously, CIPO took the position that sounds could not be trademarked.
The application for the registration of a trade-mark consisting of a sound should:
1) State that the application is for the registration of a sound mark;
2) Contain a drawing that graphically represents the sound;
3) contain a description of the sound;
4) Contain an electronic recording of the sound.
Where it is not clear whether an application is intended to cover a sound mark, the Office will ask the applicant for written clarification.
Where a sound mark is considered to be functional and/or clearly descriptive or deceptively misdescriptive, an objection will be raised pursuant to the provisions of the Trade-Marks Act.
New applications for sound marks may only be submitted by way of a paper application, and not through CIPO's online filing system. For instance, the Office can only accept a recording of the sound in MP3 or WAVE format, limited to 5 megabytes in size, and recorded on a CD or DVD. Other types of recording media and references to a hyperlink or a streaming location cannot be accepted.
Source: Joli-Coeur Lacasse Avocats, Canada Mar 27, 2012 (Newsletter Issue 5/12)Fee Payment Form RequiredCIPO reminds its clients to use the CIPO Fee Payment Form for all fee payments submitted to the office. This will ensure that the documents are processed efficiently and securely. The form can be downloaded here
CIPO also informs that the online trademark registration certificate is now accessible and available for repeated printing. For more information please click here
Source: www.cipo.ic.gc.ca Dec 01, 2010 (Newsletter Issue 17/10)
Fee Payment Methods Changed
The Canadian Intellectual Property Office (CIPO) implemented three changes concerning the process when accepting and/or treating fee payments.
1) Foreign Currency
CIPO will no longer accept foreign currencies as payment for any fees. This includes electronic funds transfers (EFT). As of December 1st, 2010, all fee payments must be made to CIPO in Canadian dollars.
2) Electronic Funds Transfers (EFT)
A contract was signed with the Bank of Nova Scotia for the management of all electronic funds transfers made for the Government of Canada. All electronic fee payments to CIPO should now be made through the above noted bank.
3) Credit Card Statements
Beginning December 1st, 2010, CIPO will no longer return credit card slips. However, CIPO will provide monthly credit card transactions summary report.
Source: www.opic.gc.ca
Aug 05, 2010 (Newsletter Issue 13/10)Database UpgradedThe Canadian Intellectual Property Office (CIPO) provides a database on its website that now includes better and more complete information concerning all active Trade-mark Opposition and Section 45 cases.
The Trade-marks Database now details the history of all actions taken by the Registrar in all stages of currently active proceedings including whether the Registrar has issued correspondence to the parties or has denied or granted an extension of time. This new information also includes details of a party's up-coming deadline in the proceeding.
To access the database please click here Jul 06, 2010 (Newsletter Issue 12/10)
Deadline for the Exclusive Use of Vienna Classification Postponed
The Canadian Intellectual Property Office (CIPO) has postponed the deadline for using exclusively the Vienna Classification to classify the figurative elements of a trademark until December 2010.
In order to help the migration to the use, a document will be prepared to illustrate how the Vienna classification will be applied and demonstrate the correlation between the previously used figurative headings and the Vienna classification.
Source: www.iloinfo.com
May 03, 2010 (Newsletter Issue 10/10)
Use of Vienna Classification Exclusively
The Canadian Intellectual Property Office (CIPO) is exclusively using the Vienna Classification to classify the figurative elements of a trademark effective by June 7, 2010.
CIPO will end its double codification of figurative elements known as "figurative headings", a non-standardized classification scheme.
In order to help the migration to the use, a document will be prepared to illustrate how the Vienna classification will be applied and demonstrate the correlation between the previously used figurative headings and the Vienna classification.
Source: www.opic.ic.gc.ca
The Trademarks Act of 1985 is the legal basis. However, significant changes came into force on June 17, 2019, including the implementation of the Madrid Protocol, the Singapore Treaty and the Nice Agreement. Trademark protection is obtained by registration. An unregistered trademark may be protected by prior use (as a common law trademark). However, protection based on prior use only is limited as an unregistered trademark may only be enforceable when the owner proves the geographic area in which it has sold/offered its goods/services and gained goodwill.
Canada's legal system is based on a combination of common law and civil law. The province of Quebec is based on the civil law tradition, whereas the rest of Canada is based on the “common law” principles. The civil law tradition in Quebec relies primarily on the application of principles codified in legislation. The common law is based on juridical decisions rendered on the basis of prior decisions, which set the precedent for similar cases while comparing all facts and merits and distinguishing cases when facts may differ.
Canada follows a first-to-use system for the determination of rights and a first-to-file system with respect to the examination of conflicting applications. A trademark is deemed adopted in Canada when it is first used or made known in Canada. However, use is no longer a pre-registration condition since June 17, 2019.
Canada uses the Nice classification system.
Registrable as a trademark is a sign or combination of signs used or proposed to be used by a person for the purpose of distinguishing or so as to distinguish their goods or services from those of others, such as words, designs, three-dimensional shapes, modes of packaging, holograms, tastes, colours, textures, scents, moving images, sounds and any combination of the above-mentioned signs.
Also, Examiners are likely to raise an objection if they consider that the trademark whether depicted, written or sounded, is clearly descriptive or deceptively misdescriptive in the English or French language of the character or quality of the goods and services with which it is proposed to be used, or of the conditions of or the persons employed in their production, or of their place of origin, if it consists merely of the name or surname of an individual who is living or has died within the preceding thirty years, if it consists of a geographical place, is confusing with another trademark, is prohibited (such as a crest, emblem or flag) or is a protected geographical indication. Finally, a trademark is not registrable if its features are dictated primarily by a utilitarian function.
If the mark is primarily merely the name or the surname of an individual who is living or has died within the preceding thirty years or if the mark is considered descriptive or deceptively misdescriptive, an exception may be made if the applicant submits evidence showing that the trademark has become distinctive in the public mind in association with the goods or services as of the filing date of the application.
The following trademark types are registrable: ordinary trademarks for goods and/or services, certification marks for goods and services.
The application is typically filed electronically at the Trade-marks Office of the Canadian Intellectual Property Office (CIPO) in Gatineau, Province of Quebec.
Applications may be divided before registration.
The conventional priority is available to any application filed in the preceding six months in or for any country of the Union other than Canada A single application can cover multiple classes of goods and/or services.
A local agent is not necessary if the applicant has a Canadian address.
If the applicant has no address in Canada, it must appoint an agent in Canada to whom the Registrar can send correspondence.
A power of attorney is not necessary to file or prosecute an application.
Foreign applicants do not need a domestic registration to file in Canada.
Trademark prosecution usually involves the filing of an application, the examination by the Trademarks Office, approval, advertisement in the Trademarks Journal for opposition (challenges) purposes and registration. Preliminary searches are not mandatory but helpful in confirming whether a third party has prior rights.
The examination by the Trademarks Office includes an examination for inherent registrability and technical compliance with the Trademarks Act, as well as an examination on potential confusion with prior pending applications or registrations. Trademarks not deemed distinctive at the examination can be registered if distinctiveness has been acquired by use, based on sufficient relevant evidence, and may be restricted to the territorial area in Canada in which the trademark is shown to be distinctive.
It takes approximately 24 to 58 months from filing to registration. There is currently a significant backlog of Canadian trademark applications awaiting first examination. Due to the backlog, it takes approximately 55 months before the CIPO examines the applications filed without using the Pre-approved List of Goods and Services, and approximately 20 months when the Pre-Approved List of Goods and Services has been used. However, applications filed through the Madrid protocol are currently examined in a maximum of 18 months. An existing registration could be extended to include additional goods and/or services.
Please note: Provisions relating to associated marks have been repealed. A trademark owner no longer needs to require that a change be made on all of its associated marks.
National:The opposition period is 2 months from the date of advertisement in the Trademarks Journal. To ensure faster and more efficient procedures, the Trademarks Opposition Board (TMOB) has decided to reduce the current benchmarks for extensions of time and the cooling off period in opposition proceedings. Consequently, from December 1, 2023, it is still be possible to apply for extensions of time at various stages of the opposition, but the time granted is generally halved.
Details regarding the
Opposition Period against designation of IR Mark are available in our publication on this topic
here
The statutory exclusive rights begin with the date of registration.
Trademarks registrations that had a renewal deadline that fell before June 17, 2019, were valid for a 15 year period from the date of registration or last renewal.
Trademarks applied for and registered after June 17, 2019, are valid for 10 yrs. The renewal period for trademarks having a deadline after June 17, 2019, is of 10 years.
Practical details on grace periods for trademark renewals are available in our publication
herePractical details on trademark use requirements are available in our publication
hereAs of January 1, 2024, the official fee for the electronic filing of a trademark application is CAD 458 for the first class and CAD 139 for each additional class. In case of paper application, the official fee will be CAD 597 for the first class and CAD 139 for each additional class.
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Practical details on trademark licensing are available in our publication
hereOnline you can see a limited part of information about this country.
More in-depth details are available for the following aspects:
General Trademark Regulations
Trademark Use Requirements
Grace Period for Trademark Renewal
Trademark Licensing
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