Trademark Practice Committee - April 11, 2017

From: Canadian Intellectual Property Office

Co-Chairs

1. Opening Remarks

The Co-Chairs welcomed participants, both those who attended in person and those who attended by teleconference. The Terms of Reference were discussed and participants were informed that they are available in both Official Languages on the CIPO website.

2. Office Practice: paragraph 12(1)(a) Objections

The current examination practice of requiring a minimum of 25 listings of the name or surname in a telephone directory is no longer a recognized international practice. In addition, CIPO has found that telephone directories are an obsolete resource due to the non-listing of cellphone numbers. As well, the Trademarks Opposition Board (TMOB) does not apply the minimum listings threshold (both the onus and the evidence before the TMOB differ from that before an examiner).

The Trademark Practice Committee (TMPC) was asked whether this practice was still relevant and how it could be modified to better reflect the requirements as laid out in the Trade-marks Act. Members agreed that moving toward alternate types of directories (electoral roll, electronic directories such as LinkedIn) could be beneficial as they are more relevant and more up-to-date. Preference was placed on continuing to apply the test of whether the trademark in question is primarily merely a name or surname, while no longer requiring a minimum of listings.

Action Item: CIPO will review the current practice to better reflect the purpose of paragraph 12(1)(a). CIPO will provide an update on this practice when available, and will provide a follow-up at the next meeting of the TMPC. Members are encouraged to provide any additional comments or suggestions.

3. Office Practice: paragraph 12(1)(b) Objections – Geographical Locations

IPIC raised concerns that examiners may be misunderstanding the new 12(1)(b) Practice Notice where a mark includes a geographical location.

In accordance with MC Imports Inc. v. AFOD Ltd., 2016 FCA 60, 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. If a trademark is determined to be a geographic name, the actual place of origin of the associated goods or services will be ascertained by way of confirmation provided by the applicant. In assessing whether a trademark is deceptively misdescriptive, it must be determined whether the ordinary consumer would be misled into the belief that the associated goods or services had their origin in the location of the geographic name in the trademark.

CIPO indicated that all examiners have been trained on this new practice and CIPO will continue training to ensure proper interpretation and application of the practice notice during examination of trademark applications.

Action Item: CIPO will follow-up with its Quality and Continuous Development Unit to ensure proper application of the tests for trademarks with geographical locations. CIPO will provide an update on progress at the next meeting of the TMPC.

CIPO will provide IPIC members with key contact information to facilitate engagement on various issues related to policy, examination, and quality and training.

4. Nice Classification (10th and 11th Editions)

In January 2017, World Intellectual Property Organisation (WIPO) released the 11th Edition of the Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification). This edition will be in use for the next five years. CIPO’s Goods and Services Manual is being updated to reflect all changes, specifically 75 transfers from the 10th Edition to the 11th Edition. CIPO will be applying the 10th Edition to all applications filed prior to December 31, 2016.

Kimberly Baillie will be attending the upcoming WIPO Committee of Experts of the Nice Union meeting in Geneva. Any suggestions or comments regarding Nice, such as proposals for revisions, can be submitted through the TMPC.

Action Item: CIPO will share the particular information to help agents identify the 75 transfers from the Nice 10th Edition to the Nice 11th Edition.

5. Agent Pilot Update

CIPO provided an update on the proposed solution to facilitate the transition from Representative for Service to Agent on File. CIPO clarified that the intent of the pilot project is to help agents (and their firms) identify files on which they have been appointed to ensure the Agent field for registrations is filled before the coming into force of Bill C 31. The agents and/or firms are provided an Excel list of all Registrations and pending applications, and are asked to validate the information.

The solution is a way to proactively address the transition from listing the Representative for Service to listing the Agent on files before the coming-into-force date. IPIC members are encouraged to use this service, and anyone wishing to do so should contact ic.cipotmbplopicdmcpl.ic@canada.ca.

6. User Fees Act Update

On June 6, 2016, and as prescribed in the User Fees Act (UFA), CIPO launched its formal public consultation on a Trademark and Patent fee-for-service proposal on its website for 30 days. During the notification period, CIPO received five submissions from various stakeholders on the proposed changes to the trademark fee structure. The majority of the comments were supportive of the proposed changes to the fees, although some issues raised were out of scope for the current UFA exercise.

CIPO received one complaint from an association regarding the proposal to merge the application and registration fees, as well as the proposed fee-per-class system. By the end of the complaint-resolution period, the association declined to request that an independent panel be named to review the complaint.

Following this consultation, the fee-for-service proposal was tabled in both houses of Parliament for referral to the appropriate committee for further consideration.

On Tuesday February 7, the Standing Senate Committee on Banking, Trade and Commerce recommended the approval of CIPO’s User Fee Proposal for changes to trademark and patent fees.

The final step for approving the new fees and regulations is through the Gazette process which will be published for consultation at the same time as the remainder of the Regulatory amendments.

CIPO discussed the timing of the pre-consultations for the proposed Trademark Regulations to be mid-June to mid-July 2017. A copy of the proposed Regulations will be available on the CIPO website along with a detailed discussion paper. Webinars will be available for stakeholders to learn about the proposed amendments. In addition, CIPO could do face-to-face sessions in several cities to provide a walkthrough of the proposed Regulations. Following these consultations, stakeholders will have another opportunity to provide input during the Canada Gazette I process, planned for later this year.

7. Canada-European Union Comprehensive Economic and Trade Agreement Update

Under the Canada-European Union Comprehensive Economic and Trade Agreement (CETA), Canada will grant recognition and protection to 172 EU geographical indications for certain categories of agricultural products and foods; the list is available in the publicly released text, available online.

With implementation of Bill C-30, Canada also proposes to open its GI regime to include agricultural products and food which fall under 24 specific categories.

CETA is signed and its implementing legislation was at Second Reading in the Senate in early March and is currently referred to the Standing Senate Committee on Foreign Affairs and International Trade.

After the review of the CETA Implementation Act by Parliament, it will need Royal Assent by the Governor General; relevant departments will then complete the required regulatory changes.

TMOB confirmed that there will be no significant changes as a result of CETA. Any changes that will be required after coming into force will be introduced as needed.

It is anticipated that CETA will be implemented sometime in 2017.

8. Online Nice Classification of Goods or Services For Registrations

CIPO will be releasing a new e-service to facilitate the grouping of goods or services according to Nice classes for registered Trademarks. This service is currently voluntary and designed to support owners of registered trademarks prior to the coming into force of all regulatory amendments in early 2019.

Webinars, in English and French, will be held prior to and after the launch of the e-service.

9. Round Table

Evidence of Use on Renewal

Agent Renewals

Many who requested electronic communications regarding the Agent Renewal Process did not receive them due to an internal technical problem. Those who missed the renewal deadline due to this error will be granted flexibility and offered a one month extension.

E-Services

IPIC communicated its desire to see more e-service offerings as a way to support CIPO’s pursuit of providing quality and timely IP rights. CIPO is currently experiencing IT modernization challenges which include competing IT projects in support of treaty implementation. The objective at this stage is to ensure that IT systems capable of accommodating Canada’s ascension to the treaties in 2019 are in place. All other potential e-service offerings not directly related to treaty implementation have been put on hold and are assessed on a case-by-case basis

Continued Dialogue

IPIC communicated its support for the frequency of TMPC, and the incorporation of teleconference attendance, as outlined in the Terms of Reference. CIPO is encouraged by the tone and uptake of the TMPC and is looking forward to continued dialogue on Office practices and approaches to provide quality and timely trademark rights to clients.

Action Item: CIPO to send IPIC possible dates for the next meeting.

Next Meeting: September 26, 2017

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