Trademark Practice Committee - December 1, 2015

From: Canadian Intellectual Property Office

Co-Chairs

Attendees for IPIC

Attendees for CIPO

1. Welcome Remarks & Adoption of Minutes

Welcoming remarks were given by Annie Crousset and Philip Lapin.

It was agreed that the present committee would meet twice per year, with ad hoc meetings when necessary.

The next meeting is scheduled for April 2016. (Date to be determined)

Minutes (Item 1)

IPIC inquired as to when and where the meeting minutes would be posted on the CIPO website. CIPO indicated that henceforth the minutes would be first approved via email to ensure timely posting and then posted on CIPO's website for IPIC Community members and the public to access. The location remains to be determined.

Adoption of the minutes from July was postponed as they were not available.

N.B.: Examiner-specific issues should continue to follow the established procedure of contacting first the Team Leader, then the Head of Examination, and finally the Deputy Director of Exam, as necessary.

2. CIPO Office Statistics

The following data were collected on November 30, 2015. Annie and Darlene presented the Trademarks Branch (TMB) and the Trademarks Opposition Board (TMOB) data respectively.

First Actions (issuing an approval notice or examiner's report)

TMB current has 26,984 files awaiting a first action. This is a reduction of 1,016 files from the figure provided at the July meeting.

The average turnaround time (TAT) from filing to first action is currently 6.4 months. This metric is unchanged from July.

Significant emphasis continues to be placed on actioning applications awaiting more than 6 months. All but 200 files awaiting over 6 months for a first action have been assigned to an examiner.

Correspondence

Within examination, the TAT for processing mail is currently between 1.2 and 1.4 months. This a reduction from the 1.6 months metric provided at the July meeting.

Filing to Registration

The end-to-end process time from filing to registration is currently 26.7 months, representing a decrease of 0.4 months from July.

37(3) Notices

As IPIC has noticed, there was an increase in 37(3) Notices in 2015 from the previous year. CIPO will monitor this; however, it may be a result of a recent increase in the volume of mail processed leading to an increase in approvals.

Section 45 and Opposition (Items 2 and 3)

IPIC requested average wait times and numbers for opposition, s. 45 proceedings, and s. 37(3) notices. In response, CIPO provided the following statistics.

As of November 30, 2015, the following number of active cases and average wait times (in months) were recorded:

Number of active cases and average wait times (in months)
  Opposition Section 45
Active cases 2,098 791
Oral Hearing request to date of Hearing 6.9 mo. 6.25 mo.
Decision issued (after Hearing) ~2 mo. ~3 mo.
Decision issued (without Hearing) 5.8 mo. 8.25 mo.

There has been a decrease in Opposition cases over the past two years. However, with the increase in volume of mail being processed in the Examination Section, the volume of Opposition cases may also increase in the near future. Presently the situation remains stable.

3. Examination

Evidence for 12(2) and 14 (Item 6)

IPIC questioned whether the TMB considers the evidence threshold to be the same for both sections 12(2) and 14. While different than one another, TMB confirmed that there has not been a change in the evidentiary threshold for each of the sections. The quality of evidence provided is essential.

It was posited that a recent increase in sections 12(2) and 14 evidence training for examiners may have led to better quality examination and more consistent application of the evidence threshold. 

30(a) Submissions (Item 7)

IPIC raised a concern that examiners appear to either not be considering or not referencing documentation submitted by agents that the latter use to establish that a particular statement of goods/services is in specific and ordinary commercial terms. TMB responded that documentation is often received that may only show the statements are in ordinary commercial terms, but not necessarily that they are specific. Furthermore, paragraph 30(a) assessments are performed on a case-by-case basis. Nevertheless, CIPO will send a reminder to examiners to ensure they detail why any submissions are not accepted.

ACTION (Item 7): TMB to ensure reminder is sent to examiners.

ACTION (Item 6 & 7): IPIC to keep track and notify the Deputy Director of Examination of any files for which examiners appear to have not applied the appropriate tests correctly.

Goods and Services (Items 8, 18 and 19)

IPIC wondered about the reasons for certain terms being removed from the Goods and Services Manual. TMB explained that the Goods and Services Manual is a live document. Terms are added and retired at suggestions of both agents and examiners. IPIC is able to consult the reason a term has been retired directly in the Manual, which is included with each retired entry. The “effective date” is also updated to reflect these changes. (The Manual permits a user to search by effective date.)

IPIC requested more information about the practice of providing suggestions to the TMB's Policy Shop. It was confirmed that emailing the Policy Shop with suggestions for the Goods and Services Manual still continues. If it is decided that a suggested term will not be added to the Manual, CIPO will provide a reason.

IPIC wondered if CIPO would consider adopting a pilot program to allow registrants to amend registrations to replace antiquated descriptions of goods with new evolved descriptions. TMB responded that this would not be possible.

Associated Trademarks (Item 11)

IPIC suggested the possibility of CIPO notifying applicants of associated marks before the approval stage. TMB responded that marks will continue to be associated only at the approval stage, which serves as the applicant's notice. It was also noted, however, that associated marks are available on the online Canadian Trademarks Database for the reference of agents and applicants when filing an assignment.

Renewal Notices (Item 14)

IPIC did not agree that CIPO should be sending notices to registered trademark owners when a representative for service is listed, in instances not covered under subsection 46(2) of the Act.

The language of the Renewal Notice was reviewed; however TMB responded that the practice of sending documents to the registered owner directly would not be changing, including the acknowledgement of renewal payment and the Certificate of Renewal.

The practice was implemented due to a high volume of duplicate renewals. As the cost of refunding is high, the notices are sent to both parties to indicate that the renewal has been processed. Following the implementation of this practice, the issue of duplicate renewals has been resolved.

Agent Perspective (Item 16)

IPIC proposed communication between IPIC members and examiners to help the latter appreciate the former's perspective. TMB will consider possible topics of discussion and the availability of a “Year in Review” discussion for examiners.

P.O. Box Addresses from Foreign Attorneys (Item 17)

IPIC noted complaints among its membership concerning foreign trademark agents recording themselves as Canadian agents by using P.O. boxes in Canada as their addresses and wondered if CIPO could do anything about this. TMB responded that CIPO does not have the legislative authority to address this issue. 

4. Trademarks Opposition Board (TMOB)

Copying the Requesting Party (Item 20)

IPIC requested that for section 45 proceedings, CIPO reconsider introducing a requirement for a registrant to copy the requesting party. TMOB explained that section 45 does not include provisions for a registrant to copy a requesting party. Additionally, TMOB does not have the regulatory authority to police this situation.

5. IT

Section 9 (Item 12)

IPIC asked why applications for Official Marks cannot be submitted online. TMB indicated that a greater number of filings of Official Marks would be required to justify the investment in infrastructure that would enable online submissions. Currently, there are less than 500 submissions a year.

Postal Code Field (Item 13)

IPIC requested an additional field be added to enter postal codes of international applicants. TMB explained that its current online system integrates well with the entry of international postal codes and that extending the box to include the extra field for these postal codes would not be compatible with the current system. 

6. Nice

Voluntary Nice classification and the Office Practice (Item 5)

IPIC had a number of questions concerning the voluntary classification of goods and services as per the Nice Classifications. To answer some of the agent community's concerns and questions about CIPO's office practices concerning Nice classification, TMB explained that CIPO will be adding a number of Q&As to those that were posted to its website in September. The Examination Manual has already been updated to include a section on Nice Classification.

IPIC noted that it is quicker for agents to copy and paste into the e-filing tool, rather than using the pre-approved list. In order to encourage use of the “classify list” and other tools available, the committee discussed the holding of additional Goods and Services Manual demos for specific firms, if there is enough interest. TMB would be able to provide such demos. Any questions regarding the Goods and Services Manual interface should be directed to the Technical Policy and Training team (ic.dmcpolitique-tmbpolicy.ic@canada.ca).

7. Round Table

More IPIC members would like attend meetings. It was agreed that if more than three members are to participate, rules of conduct should be formally established. (This item has been left for further consideration.)

Practice Notices

TMB clarified the respective roles of Practice Notices and the Examination Manual. Practice Notices are issued when there are major changes to existing office practices or upon the implementation of new office practices. Upon issuance, the Practice Notices become part of the Examination Manual. Unlike the Notices, the Examination Manual is a live document; therefore, clarification of any office practice is typically reflected in the Manual.

Extensions of Time

TMB confirmed that the current office practice of granting extensions of only six-month durations will remain.

ACTION: TMB to conduct a review of the Practice Notice wording to ensure understanding.

Representative for Service

For registrations, while representatives for service are listed, agents are not.  Under Bill C‑31, the concept of a “representative for service” is eliminated. Accordingly, the agent field has now been included on the Canadian Trademarks Database.

In the past, once a trademark was registered, the agent information became dormant and only the representative for service's information could be updated and extracted to the database. No changes were made to the agent information field. This led to many registered files having active representative for service information that was different than the dormant agent information, which was never deleted.

As a result, a clean-up of the data was required before the agent field could be included on the database and the following procedure was implemented:

TMB indicated that a pilot project was underway with a small firm to generate an Excel list of affected files. If it goes well, this practice will be expanded to all agents to avoid an influx of correspondence within the TMB.

Next meeting: April 2016 (exact date to be determined)

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