Trademark Practice Committee - May 6, 2016
From: Canadian Intellectual Property Office
- Annie Crousset (CIPO)
- Philip Lapin (IPIC)
Attendees for IPIC
- Henry Lue
- Tracy Corneau
- Sandra Ward
Attendees for CIPO
- Iyana Goyette
- Sylvie Genest
- Jeffrey Orser
- Cindy Folz
- David H. Fournier
1. Adoption of Minutes
CIPO re-sent the minutes from the July 9, 2015 meeting to IPIC, which will approve them formally by email.
The minutes from the December 1, 2015 meeting were distributed prior to this meeting and will also be approved by email.
2. Status on Action Items
The following actions from the December minutes were performed prior to the meeting:
- CIPO sent a reminder to examiners to ensure that they detail why any submissions or attachments received from agents concerning paragraph 30(a) objections are not accepted. The situation will be monitored.
- The Deputy Director of Examination has not yet received any feedback from IPIC or its members concerning examiners who appear to not be applying the appropriate tests correctly. IPIC is still encouraged to provide this feedback, if any.
- CIPO conducted a review of the practice notice wording regarding the granting of extensions of time of six months at the Examination stage. It noted that there appear to be two possible interpretations, namely exceptional circumstances for subsequent extensions of time are required either: (a) for every request after the very first extension granted (if no new objections); or (b) only for subsequent requests after a first extension is granted on each new examination report. Currently (b) is being followed in the Examination section, but the practice is under review and TMB will consult in the event of proposed changes to the current practice. The duration of six months for each extension will remain as is at the present time.
3. Trademarks Statistics
Prior to the meeting, CIPO distributed a report entitled "2015-16 CIPO Trademarks Statistics", the content of which was discussed. Of note:
- CIPO is aiming to decrease inventory awaiting first actions (25,750 files for 2015-16).
- Many files which are not meeting CIPO's turn-around time (TAT) performance targets from filing to registration are due to the delay caused by waiting for applicants to file a declaration of use.
- An issue was identified at CIPO in relation to searchers which had caused a delay in TAT for new files awaiting a first action. This accounted for most formalized files aged ≥7 months. The issue is currently being dealt with through the recent hiring of new searchers.
- The increase in 37(3) notices in recent years can be attributed to the change in internal practice in February 2013 by which examiners were able to send out these notices without having to first raise a confusion objection. CIPO notes that the percentage of opposition files for which a notice had been received has actually decreased, thereby suggesting that there is no correlation between the change in practice and the number of opposition cases.
- A mail project in Examination may be the reason for an increase in registrations (7,413 more than last year). It was also suggested to be a potential factor in the increase in number of oppositions.
4. Nice Update
CIPO indicated that all examiners have now completed Nice training and more training is scheduled in December/January concerning the new version of the Nice classification.
IPIC requested clarification on the current practice of raising Nice class objections. CIPO explained that given that Nice classification is currently voluntary and not yet law, an objection concerning Nice classes would only be raised if there are other objections or requirements outstanding on the file. Otherwise, the file will be approved and if there are Nice classes deemed incorrect, all goods and services will be classed at "0" (i.e., no class). If an examiner's report is issued, applicants will have the opportunity to respond to any Nice-related objections.
IPIC asked if a classification of "0" would cause problems for searching potentially confusing marks. CIPO assured that this has no impact on searching.
In an effort to promote the use of the pre-approved list on the online system among applicants/agents, CIPO is working on improving the list and increasing the number of entries. Presently, over 70% of new applications submitted online have applied Nice classes to goods/services and over 12% of these have used the pre-approved list.
5. Agent Pilot Update
CIPO clarified that the intent of the pilot project with smaller firms to identify files on which they are agent was to ensure the Agent field for registrations is filled before the coming into force of Bill C 31. The pilot was a success. A firm was made aware of files for which they are listed as representatives for service, but not as agent and were asked to confirm if they wish to be included as agent. However, CIPO is currently experiencing IT difficulties and is waiting for a fix before it can roll out the initiative to all the firms. To avoid errors, the objective is to ensure that the data extraction and input is entirely automated.
IPIC wondered when the project would be fully executed. CIPO responded that it will be prioritized with the next IT system release, but it is not clear when that will be.
6. Lean Initiative in Exam Update
CIPO explained that the Lean initiative in Examination is designed to streamline the production line and reduce turn-around times. The pilot project conducted from February 2015 to March 2016 involved a total of 1,337 files and the participation of agents from seven different firms. The following changes in practice resulted from the recommendations obtained from the pilot:
- Examiners will now include more detailed 30(a) objections with acceptable example statements.
- They will also call agents to resolve minor 30(a) issues to avoid the unnecessary issuance of examination reports. Examiners will specify how much time they will hold a file waiting for a response prior to resorting to issuing a report.
It was noted that similar courtesy phone calls may also be made for minor Nice class discrepancies.
The above updated practice is now in place for all examiners since April. Therefore, agents should already be noticing the changes. CIPO is looking into ways to measure the level of compliance with the new practice by examiners.
IPIC expressed concern that a turn-around time to respond to phone call objections be of reasonable length in order to submit a response. CIPO assured that a flexible two-week range as a deadline to respond to a phone call would be the norm, which IPIC considered reasonable.
IPIC expressed general pleasure with the Lean initiative and indicated that it suited their clients.
CIPO announced further that it is currently preparing training materials for examiners to issue more detailed first reports for substantive confusion objections. These reports would be more specifically tailored to the specific objections. This initiative is scheduled to be carried out by the end of May, with similar initiatives for 12(1)(b) and (c) objections after the summer and 12(1)(a) sometime thereafter.
ACTION: CIPO to take measures to determine level of compliance amongst examiners with respect to the new Lean practices.
7. Recording Assignments/Agents
With respect to previously-noticed errors made by Operations staff when performing multiple assignments or changes thereto, CIPO indicated that a follow-up had been conducted with Operations including a reminder to ensure accuracy and completeness of the task. CIPO has increased monitoring of these tasks performed by Operations staff. CIPO recommended that agents continue to verify all confirmation of requests completed and invited IPIC to report any discrepancies directly to the Manager of Operations.
8. Information Technology & Process Issues
Electronic Examination Reports
CIPO could not give an exact timeframe for when examiners' reports would be issued electronically. The implementation of Bill C 31 has taken priority. In addition, an updated IT system that can manage all the electronic documentation is still needed before it could be considered feasible. Currently, CIPO is planning a project to digitize all documentation submitted. Once the IT requirements are known, CIPO will have a better idea of a projected timeline.
CIPO also mentioned that it was currently working on retention and disposition procedures in the context of Bill C 8, concerning which archived trademark files will be retained and which will be disposed of. It was also noted that Archives Canada did not wish to keep any of these files.
Filing colour marks
The committee discussed the issue previously raised by IPIC in which examiners would request confirmation of a colour claim even when the applicant had indicated that colour was not claimed, resulting in the unnecessary issuance of an examiner's report.
CIPO had investigated the issue and determined that the wording in the online application form inquiring about colour claims may be confusing to some applicants potentially leading to applicants inadvertently not indicating whether colour is claimed, even though they may think they did. A review of this wording is underway.
CIPO explained further that at filing Operations staff writes "submitted in colour" on applications to alert examiners that a mark was submitted in colour, whether or not a colour claim statement is included. CIPO committed to sending an update to Operations staff to ensure they only write "submitted in colour" when it is not clear from the application whether colour is being claimed.
ACTION: CIPO to update practice in Operations to only write "submitted in colour" on applications for which it is not clear if colour is being claimed.
IPIC had previously raised an issue where their clients are failing to receive all correspondence issued from CIPO (including reports, approvals, allowance notices, etc.).
CIPO has done the necessary follow-ups with the Records Office and Mail Room and reported that there have not been any IT issues with regards to printing or preparation of correspondence. It was suspected that missing reports may be due to human error within the Office. CIPO speculated further that a higher than normal turnover in Records Office staff might be contributing to the increase in missing correspondence. CIPO indicated that reminders have been sent to ensure the integrity and quality of the printing process in the Records Office and the transferring and bundling of correspondence in the Mail Room.
By way of example, CIPO noted a general issue of missing correspondence dated March 18, 2016 and given the amount of feedback received, it decided to reissue the reports of that day. IPIC inquired when would be appropriate to contact CIPO to formally provide feedback on missing correspondence. CIPO responded that in the event that there appears to be a specific trend (e.g., a high volume of missing correspondence), then feedback would be welcome.
The Records Office Supervisor will be conducting additional spot checks to ensure integrity and quality of the printing process.
Dates on Approval Notices
IPIC had reported that some of its members had noticed that the timing on the date set out on approval notices did not always seem to be consistent. However, CIPO confirmed that the bring-forward date is automatically generated at 28 days (i.e., four weeks) from the date of the notice. CIPO indicated that it would require examples to determine any apparent inconsistencies with this date.
Formatting of TM Journal
IPIC requested a change in the formatting of the new online Trademarks Journal, such that the individual bases for registration and priority claims would appear in separate paragraphs. It considered that the desired formatting would facilitate review.
CIPO informed that an IT fix was required and is currently pending, but that the change should be forthcoming.
ACTION: CIPO to follow up on this item at the next meeting.
Declaration of Use extension deadlines
IPIC had noted that there was occasionally a discrepancy between the date set to file a declaration of use after an extension had been granted, namely CIPO's online system always indicates the first business day after the six-month extension period, whereas the confirmation notice always shows exactly six months.
CIPO confirmed that it had discovered an IT issue with its online system and how it communicates with the internal system. Discussions are currently underway with the IT team to see what can be done and when in order to fix the issue.
ACTION: CIPO to determine how the BF date discrepancy for extensions of time to file a declaration of use can be rectified and when.
9. User Fees Act (UFA)
A document was circulated at the meeting outlining the expected changes to CIPO's fees as a result of Canada's plan to join the three international trademark treaties. Proposed changes to trademark fees had already been shared with IPIC for consultation in April 2015.
CIPO highlighted that the current draft of the fee review includes fees that are higher than previously proposed; however, they are either the same or lower than those of other comparable IPOs. IPIC stated that fees appear to be reasonable and more appropriate, and that the fee per class is useful to remove clutter on the register.
IPIC wondered whether the proposed $100 additional fee per class indicated in the document under "online" filing should actually be only for paper applications. CIPO clarified that the policy intent is that if an examiner determines that there are more classes than originally paid at filing, an applicant should be able to pay the difference at a later time through the online system.
10. Round Table
Evidence of Use on Renewal
IPIC asked if CIPO might consider implementing a requirement for applicants to file evidence of use on the renewal of their trademark registrations to remove clutter on the Register, as is done in the United States. CIPO explained that it was not considering implementing such a procedure, since the Canadian Trade-marks Act already has provisions under section 45 which provide for the effective removal of trademarks not in use on the Register. Furthermore, part of the legislative changes in Bill C 31 clarified section 45 proceedings insofar as the Registrar is able to issue section 45 notices in its own right. This appears to be a more efficient model since Canada would only require a selection of trademarks owners to show use as opposed to every owner.
ACTION: CIPO to distribute to IPIC the study detailing the inefficiencies of the "evidence of use" system on renewal in the United States.
Request to increase IPIC presence at Committee Meetings
Other IPIC members wish to have more information as to what takes place at these meetings. Some members have complained that they miss the context behind the decisions made at the meetings, despite the publishing of the minutes and their participation could reduce delays in conveying the information to IPIC's clients. IPIC requested CIPO to consider allowing observers via teleconference who would remain muted throughout the meeting.
ACTION: CIPO to consider this possibility and follow up with IPIC.
Status of Bill C 31 and Madrid Implementation
IPIC inquired on the implementation date for Bill C 31 provisions. CIPO reaffirmed that it is still scheduled for early 2018, but that a firm date has not yet been set, mainly due to IT considerations.
CIPO asked when ideally IPIC would want Madrid to come into effect if they had a choice. IPIC noted that likely, the longer it takes the implement Madrid, the happier agents will be. However, IPIC warned that there is a conflict of interest in this regard, since with Madrid, foreign applicants do not need Canadian agents.
IPIC requested that at least six months' notice prior to the implementation of Bill C 31 be given, as previously agreed upon. CIPO indicated that this was feasible.
CIPO estimated that there are 750,000 files to classify with Nice classes and that it might need to start processing these classifications a year before implementation of the treaty. As the IT fixes are complete, CIPO ensured timely communication with IPIC of the new strategies to help agents and applicants, for example, to classify their goods/services.
CIPO underscored that its top priority in this regard is developing and sharing with IPIC a transitional provisions guide. Transitional issues such as those resulting from the decrease of the renewal terms from 15 to 10 years will be included in the document.
ACTION: CIPO to bring transitional procedures to the next Committee meeting.
Third Party Correspondence
While the third party correspondence procedure was not discussed at the meeting, IPIC was in favour of CIPO's suggestion of holding an ad hoc teleconference in June to discuss this item.
IPIC wondered whether examiners or their supervisors make 9(1)(j) objection decisions, as relates to scandalous, obscene or immoral trademarks. CIPO confirmed that examiners make these decisions in most cases, but exceptionally seek advice from their supervisors.
12(1)(b) Interpretation Update
CIPO notified that changes to the way examiners evaluate12(1)(b) are forthcoming, following the decision of the Federal Court of Appeal in MC Imports Inc. v. AFOD Ltd., 2016 FCA 60. As the change in practice would result from case law, there will be no external consultation. CIPO stated that it is working closely with its legal counsel and will do a complete scan of existing case law to determine the scope of this decision. For now, examiners have been asked to put aside certain files of possibly clearly descriptive marks while a practice notice is being drafted.
IPIC reiterated its preference for more Committee meetings, if possible (e.g., at least three per year). CIPO considered having additional "light meetings" by way of teleconference as was suggested for the June teleconference proposed above to discuss third party correspondence. IPIC endorsed this idea.
ACTION: CIPO to send IPIC possible dates for the next meeting(s).
Next Meeting: Fall 2016 (to be determined)
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