Archived — Practice Notice: Changes Related to Section 45 Procedures, Publication Date: 1983-12-21

This practice notice is no longer in effect

Changes Related to Section 45 Procedures

Publication Date: 1983-12-21

A detailed discussion on matters of procedural change took place at the Trade Marks Joint Liaison Committee Meeting held on September 20, 1983. It is intended that the procedures be streamlined in the Assignment and Renewal Section to allow for the expeditious entry of transfers and other amendments to the registers. In addition it is hoped to alleviate the difficulty in obtaining trade mark files from the File Room because of the heavy demand for files and the delay in the return of files where work is bottlenecked or two or more parties have need for specific files at the same time.

  1. The Office will adopt the practice of issuing Section 45 notices of renewal based on information contained in the registers without reference to the pertinent files. This is desirable to streamline procedures and eliminate the necessity of retrieving files which are very often already out on charge for other purposes. Section 45 notices and response letters will in future not be placed on their respective files. Instead, these notices and responses will be subject filed in a single series sequentially by date of renewal in registration number order.

    In light of the fact that renewal letters no longer will be placed on files, expungement of trade marks for non-compliance to the Section 45 notice will generally not take place unless there has been a full review of the file to ensure that renewal fees didn't get misdirected to the files, transfers of ownership or changes of address have not been actioned or any other situation has occurred which could have led to the misdirection of the notice. If the Office can establish that notices have been misdirected for some oversight on its part, such notices will be reissued providing a new full renewal period within which the registrant may renew. In some instances where files are missing and marks appear not to have been renewed and the Office through contact with the registrant or his representative can reasonably establish that the act of renewal did not take place, the expungement will proceed even though the file is unobtainable.

  2. When parties other than the registrants or their representatives present transfers of ownership on trade marks for which Section 45 notices have been issued and are outstanding, the Office will discontinue the practice of reminding such parties that the marks are due for renewal. While the onus to renew such marks will become the responsibility of the new owners, the Office will not as a matter of practice continue to give notices to the new owners because appropriate notices will already have been given pursuant to Section 45.
  3. A revised Section 45 notice will include a statement to the effect that the notices should be disregarded if the renewal fees have already been remitted. What is intended by this is that registrants should trust the system and assume that the marks will be renewed or adequate precautions taken to ensure that unintended expungements will not take place. Normally all that has happened is that the remittances have crossed in the mail and by waiting for a reasonable period, the renewal certificates will be issued and relieve all concerns well in advance of the expiration of the four month renewal period.
  4. The Office does not have the resources to continue the practice of accepting general directives that certain firms of agents have changed their names or addresses and to ensure that notices pursuant to Section 45 are directed in accordance therewith. In future, all registered owners or their representatives will be directed notices in a manner appropriate to reflect the information contained in the registers particularly as it relates to addresses and named representatives.
  5. The Office has an established practice of making reference to design marks by creating abbreviated descriptions where the words or lack of words in marks fail to identify the marks beyond their registration numbers. These abbreviated descriptions have no legal significance and are used only in the Section 45 notices for the purpose of providing registrants with a means, beyond the registration numbers, to distinguish what specific mark is involved particularly when the registrants are the owners of numerous marks.

There may be some inconsistency in the abbreviated descriptions we designate in the notices in future because we will be creating new ones for an interim period until such time as the computer systems generate the notices automatically when the data base has been verified and we are operating with a fully electronic register.

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