Archived — Practice Notice - Changes Related to Transfers and AmendmentsPublication Date: 1983-12-21
Changes Related to Transfers and Amendments
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.
- When insufficient fees have been remitted in respect of transfers and amendments, deductions will be taken from deposit accounts where such accounts exist and telephone authorizations have been obtained. In cases where large multiple transfers or amendments are in order except for inadequate fees and no deposit accounts exist, the changes will be entered in the registers with the submitting party billed under accounts receivable procedures.
- In respect of changes of names and amendments, other than assignments, such as mergers; changes of representatives; and addresses, cancellations or additions to lists of trade marks affected will be made by the Trade Marks Office following telephone authorizations.
- The use of the telephone by the Trade Marks staff will be encouraged to a greater extent to permit a more effective dispatch of the workload. The cooperation of the profession and the general public to this end is solicited, however, wherewritten correspondence is preferred that practice will be continued.
- In amending the registers to record changes of ownership or the names or addresses of owners of groups of associated marks, the Office will research the associated marks to the extent only that two associated marks have been observed as missing from the request in contravention of Section 15(3). When this occurs a generic type of letter and documents, where appropriate, will be returned to the submitting parties for research and remedial action.
This constitutes a change to the notice published in the Trade Marks Journal of August 10, 1983 in that the Office will research the associated marks to the point where two have been observed as missing as opposed to one. It was and still is the Office intention to ensure that the associated marks are active and that no outstanding actions affecting ownership are pending by reviewing the files. Furthermore, if cards in respect of the missing associated marks are found to be missing in the name index, the Office will not count such associated marks in the application of the two mark principle.
- In the situation where transfers and changes of names can be registered against a number of trade marks to which they pertain while some other marks involved in the request do not stand in the appropriate name (chain of title is incomplete), the registration of the instruments against those in good order will take place. Needless to say, all associated marks must be included pursuant to Section 15(3). The submitting parties will be advised as to the circumstances regarding the partial registrations and the onus will be on them to complete the chains of title so that full registrations of the initial request can take place.
- The bottleneck of files in the Assignment area is causing considerable loss of productivity due to the heavy demands for many files for other purposes and the maintenance of the system to permit retrievals. In an effort to relieve the situation, as an interim measure, the Office will advance all files which appear to be those which can be disposed of readily without regard to the chronology of reception. It should be noted that this is a temporary measure only to relieve the current situation.
- In order to relieve the need for the Office to call for addresses, parties submitting mergers and amalgamations should give special attention to the need for addresses which are not usually given in such documents. Where addresses are missing the Office would appreciate cooperation in obtaining the information by telephone as mentioned in item 2 above.
- Where transfers and changes of name or other amendments are presented simultaneously with renewal fees, the Office will acknowledge the renewals on separate letters from the other actions to simplify procedures. Although separate acknowledgments to the different actions would appear to indicate that the actions are taken independent of each other, the Office will ensure that the renewal certificates will always be issued in the names of registrants as reflected by all documentation presented in a suitable form for entry in the registers at time of renewal. In other words, if the documents are not acceptable for entry in the register, the renewal certificates will be issued without regard to them.
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