Trademark Practice Committee - September 26, 2017
From: Canadian Intellectual Property Office
- Mesmin Pierre (CIPO)
- Henry Lue (IPIC)
1. Opening Remarks
The Co-Chairs welcomed participants, both those who attended in person and those who attended by teleconference.
IPIC communicated its support for the frequency of the TMPC and the opportunity to discuss policy and practice issues of mutual interest. CIPO is looking forward to continued dialogue on Office practices and approaches to provide quality and timely trademark rights to clients.
The Record of Discussion from the previous meeting is now available online in English and French.
A brief update on the implementation of Canadian Economic and Trade Agreement (CETA) Implementation Act was provided. Under the CETA Implementation Act, Canada has granted recognition and protection to 172 EU and 4 Korean geographical indications. As well, the existing Canadian GI system has been expanded to include certain categories of agricultural products and foods. Procedures on how to make a request are available on the CIPO website.
TM Regulations Update
Following the informal technical reviews in February and the public consultations held in June and July 2017, CIPO has been able to finalize the amendments to the Regulations. Where possible, difficult to understand provisions were clarified and re-worded. A proposed final draft of the Trademarks Regulations will be published in the Canada Gazette Part 1, in spring 2018.
CIPO will continue to engage with stakeholders to support the drafting of guidance documents and practice notices to assist trademark practitioners become more familiar with the processes and obligations of Canada's modernized trademark regime.
More information on the coming-into-force date of the amended legislation and regulations will be published in the Canada Gazette Part II scheduled for some time in late 2018.
2. Action Item Update
12(1)(a) Practice Notice
CIPO drafted and shared with TMPC members a one-pager with the Office's proposed approach to remove the requirement of a minimum listing of 25 entries of a name or surname in telephone directories and only apply the test of whether a trademark is primarily merely the name or surname of an individual who is living or has died within the preceding thirty years. CIPO confirmed that this approach would result in the Office applying the law in a consistent manner and align itself with the practice of the Trademarks Opposition Board.
Members asked for clarification on how the Office will deal with stage names, pseudonyms and famous names, and how research will be used in applying the test of whether a trademark is primarily merely the name or a surname.
CIPO will draft a practice notice which will be shared with members of the TMPC at the next meeting.
12(1)(b) Practice Notice
CIPO has followed up with its Quality and Continuous Development Unit to ensure proper application of the tests for trademarks that consist of, or include geographical locations. The Office is focused on applying the practice in a consistent manner and examiner refresher training will be completed by the end of October.
Members are encouraged to continue to communicate with the Office and with Team Leaders if they have any questions or concerns on the application of the practice notice.
CIPO shared a document identifying the 75 transfers from the Nice 10th Edition to the Nice 11th Edition.
3. Office Closures
Following the flooding the National Capital Region experienced this spring, a new web page entitled Closed for business dates now captures the dates of all office closures including Unscheduled business closure dates. This information will be updated as necessary and will not be archived. The link has been provided for ease of reference.
Clarification was sought on CIPO's authority to close for business due to extraordinary circumstances and how this affects the granting of filing dates for those applications filed on days the Office is closed.
Action item: CIPO will provide written clarification to members on office closures.
4. Sub-working Groups on Office Practices
It is CIPO's intent to form working groups with individuals from the agent community to work together with Trademarks Branch and Trademarks Opposition Board staff to draft and revise practice notices.
These groups will tackle topics such as non-traditional trademarks; colour; divisional applications; distinctiveness; and Section 45 and Opposition procedures. It is important that participants have a working level knowledge of the topics.
CIPO would like to seek IPIC's support and would propose that the format of the public consultations roadshow organized with IPIC's support this past summer be replicated, with organized meetings in Montreal, Ottawa, Toronto and Vancouver.
Once a more formalized plan has been drafted, CIPO will engage IPIC to help with logistics.
5. Section 57 Proceedings
CIPO provided an update to members that it will be initiating pilot proceedings before the Federal Court in an effort to correct clerical errors made by the Trademarks Office. The Office has been informed of two registrations that include Registrar-made errors. These cases will form the basis of the proceeding.
6. Broad Applications
CIPO informed members that it is aware of the issue and that further research will be conducted.
7. Extensions of Time
Members were informed that CIPO is looking to revise the existing practice on extensions of time, both at allowance and at examination, with the aim of decreasing the time allowed. The Office is currently compiling data on the time granted and the reasons for the granting of extensions.
The Office will draft a one-pager outlining the findings, considerations, and options which will be presented for discussion at the next meeting of the TMPC.
IPIC members suggested delaying the implementation of a revised practice on extensions of time until after the coming-into-force of the new legislative framework.
Action item: CIPO will draft a one-pager outlining the findings, considerations, and options which will be presented for discussion at the next meeting of the TMPC.
8. Quality and Timeliness
CIPO published its renewed Business Strategy 2017-2022 this summer. A key pillar of this strategy is improving the quality and timeliness of IP rights.
The Office will be focusing its efforts on addressing the capacity gap in Operations and Examination. A regular update on progress will be provided at each TMPC to ensure that members are kept informed of changes and improvements.
9. Closing Remarks
The Trademarks Branch and Trademarks Opposition Board 2017-2018 Statistics document will be reviewed and a revised version will be circulated shortly.
IPIC and CIPO reiterated their commitment to the TMPC as a forum to discuss policy-related issues. The Co-Chairs will discuss possible dates for the next meeting of the TMPC.
Action item: CIPO to send IPIC possible dates for the next meeting, either in late 2017 or early 2018.
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