Alternative formats
Presentation Overview
- Renewal of registrations & Nice Classification
- Extension of time
- Temporary appointment of agent
- Filing a divisional application
- Inherent distinctiveness
- Madrid Protocol: WIPO Irregularities & Best Practices
- Questions
Renewal of Registrations
Renewal process for registrations for which the goods or services have not been grouped according to the classes of the Nice Classification system.
The Recommended Steps to Renewal
Basic Renewal Fee
Where goods or services of a registration have not been grouped and classed, the registered owner can renew by initially paying the basic renewal fee for the first class
- $400 if paid using CIPO e-service
- $500 otherwise
44.1(1) Notice
Once the renewal has been processed, the Registrar will send a notice under subsection 44.1(1) of the Act requiring the registered owner to group the goods or services according to the classes of the Nice Classification.
6 Months to Provide Statement
Under section 63 of the Regulations, the registered owner must provide the Registrar with the statement of goods or services grouped and classed according to the Nice Classification within 6 months after the date of the 44.1(1) notice.
Statement Reviewed
When the statement required by the notice is provided, the Nice Classification information will be assessed by an examiner.
Note that it is not possible to provide Nice Classification information in one request in respect of more than one registration (contrary to section 4 of the Regulations).
Unacceptable Statement
If the examiner determines that the Nice classification information is not acceptable, a report will issue which:
- provides guidance as to the appropriate class for a given good or service; and
- Specifies the amount of any additional required fees
If the registered owner does not respond to this report, the Registrar has the authority to make the final determination as to the proper Nice Classification information under subsection 44.1(4) of the Act.
Acceptable Classification
If the examiner determines that the Nice Classification information is acceptable, a report will issue confirming the final classification of the goods or services together with a client proof sheet.
Acceptable Classification
- If any additional fees are required, an adjusted renewal fee notice will be issued.
- These fees must be paid within two months of this notice.
- Failure to pay these fees will result in the expungement of the registration.
Pay Adjusted Renewal Fees Online
textual equivalent
The image is a screenshot of the home page for the E-services system of the trademarks. The image has a left side panel and a centre portion, which is titled "Home". The left side panel is titled "Trademark E-Registration and E-Renewal" and this title is framed in red. The tabs in the left side panel are, in order, "Registration of a trademark", "Renewal of a trademark", "Adjusted renewal fee", "Cart 0", "Transaction history", "Online help" and "Problem report". The centre portion of the page starts with the title "Home" and, underneath, the sentence: "This service allows the trademark agent to complete the registration for a trademark or renew an existing trademark registration.". Three boxes take up most of the centre portion below the title. The first box has a grey circle in which is found the icon of a piece of paper with the registered sign (capital R in a circle). Underneath the circle is the subtitle "Registration" and the sentence "Search for applications that are available for registration". The second box has a grey circle in which is found the icon of a piece of paper with two arrows pointing clockwise in the shape of a circle. The second boxes subtitle is "Renewal" and the sentence is "Search for registrations that are eligible for renewal". The third and final box is framed in red and has the cursor in the shape of a hand placed on it. This third box has a grey circle in which is found the icon of a piece of paper with a dollar sign. The subtitle is "Adjusted renewal fee" and the sentence below: "Search for registrations that require the payment of adjusted renewal fees".
textual equivalent
The image is a screenshot of the web page appearing when the user clicks on the third box of the slide 14. The image has a left side panel and a centre portion, which is titled "Adjusted renewal fee search". The left side panel is titled "Trademark E-Registration and E-Renewal". The tabs in the left side panel are, in order, "Registration of a trademark", "Renewal of a trademark", "Adjusted renewal fee", "Cart 0", "Transaction history", "Online help" and "Problem report". The "Adjusted renewal fee" tab is highlighted in dark blue. The centre portion of the page starts with the title "Adjusted renewal fee search" and, below, a triangle pointing towards "Privacy Notice". Underneath is a blue box "Refer to the trademarks database for more information on the particulars of the trademark to ensure the correct trademark application has been selected". The sentence "This section allows the registered owner of a registered trademark to pay for any outstanding renewal fees based on the number of classes of goods or services" is located underneath the blue box. Below is a bulleted list with three items: "Search by application number", "Search by registration number" and "All". The bulleted list is framed in red and the "Search by application number" is selected. An empty box allows data entry underneath "*Application number (Max. 7 digits) (required)". The asterisk and "(required)" are written in red. Below the empty box is a dark blue button "Search". A red arrow is pointing the empty box.
textual equivalent
The image is a screenshot of the web page as a continuation of the slide 15. The image has a left side panel and a centre portion, which is titled "Adjusted renewal fee search". The left side panel is titled "Trademark E-Registration and E-Renewal". The tabs in the left side panel are, in order, "Registration of a trademark", "Renewal of a trademark", "Adjusted renewal fee", "Cart 0", "Transaction history", "Online help" and "Problem report". The "Adjusted renewal fee" tab is highlighted in dark blue. The centre portion of the page starts with the title "Adjusted renewal fee search" and, below, a triangle pointing towards "Privacy Notice". Underneath is located the sentence, "This section allows the registered owner of a registered trademark to pay for any outstanding renewal fees based on the number of classes of goods or services". Below is a bulleted list with three items: "Search by application number", "Search by registration number" and "All". The "Search by application number" is selected. Below is "*Application number (Max. 7 digits) (required)". The asterisk and "(required)" are written in red. Underneath, there is a box with an application number entered. Below the box is a dark blue button "Search". Underneath you can read "Search results" with a table divided into six columns and two rows. The columns are, in order, "Application no.", "Registration no.", "Trademark", "# of Nice classes", "Due date" and "In cart". There is nothing written under "In cart". Finally, a red arrow is pointing towards a dark blue button "Add to cart" located underneath the table.
textual equivalent
The image is a screenshot of the web page as a continuation of the slide 16. The image has a left side panel and a centre portion, which is titled "Cart". The left side panel is titled "Trademark E-Registration and E-Renewal". The tabs in the left side panel are, in order, "Registration of a trademark", "Renewal of a trademark", "Adjusted renewal fee", "Cart $125.00 1", "Transaction history", "Online help" and "Problem report". The "Cart $125.00" tab is highlighted in dark blue. The centre portion of the page starts with the title "Cart" and is followed, underneath it, by the sentence "The list below contains the transactions that are ready for payment or submission". Below this sentence is a table divided into five columns and two rows. The columns are titled, in order, "Trademark", "Application no.", "Registration no.", "Fee" and "Actions". In the table, under "Trademark", there is a trademark reference is a hyperlink. Under "Fee", there is the following two sentences: "Adjusted renewal class fee 1 x $125.00" and "Subtotal $125.00".A little further down, underneath the table, a red arrow is pointing a dark blue button "Proceed to payment". On the right of this button is a white button "Empty cart".
Failure to Furnish
If, following the issuance of a notice under subsection 44.1(1) of the Act, the registered owner does not respond to the notice by providing the classes for the goods or services, the Registrar will send a further notice under subsection 44.1(3) giving the registered owner 2 months to comply.
If, following the issuance of a notice under subsection 44.1(3) of the Act, the registered owner does not respond by providing the classes for the goods or services, the registration may be expunged or not renewed.
Authority to Request Amendment of Statements
While specificity of goods or services will aid in their classification, the Registrar does not have the authority to require that any of the goods or services in the registration be amended to comply with specificity requirements in examination, since these provisions are relevant to applications and not registrations.
Renewal Process
(Goods or services not classed at renewal)
textual equivalent
The diagram visually represents the renewal process for trademark registrations that do not group the goods or services according to the classes of the Nice Classification system at the time of renewal. If the registered owner pays at least the base renewal fee, the Office will renew the registration and then issue a subsection 44.1(1) notice that requires the registered owner to group all of the goods or services according to the classes of the Nice Classification system. If the base fee is not paid, the renewal cannot be processed. If the registered owner provides the goods or services grouped according to the classes of the Nice Classification system, the Office will issue an adjusted renewal fee notice if an additional fee must be paid. If the registered owner does not provide the Nice information, the Office will issue a further notice under subsection 44.1(3) of the Act giving the owner two additional months to provide the statement of goods or services grouped according to the classes of the Nice classification. If the Nice information is provided following the 44.1(3) 2-month notice, the Office will issue an adjusted renewal fee notice if an additional fee must be paid. The registration will be expunged if the registered owner has not provided the statement of goods or services grouped according to the Nice classification two months after the receipt of the further notice under 44.1(3) or if any adjusted renewal fee is not paid.
The Inadvisable Steps to Renewal
Scenario #1
- The registration is renewed and the base fee for one class is paid using the online renewal service; and
- on the same day, the goods or services are grouped according to the Nice Classification using the online service; and
- on the same day, the fees for the additional Nice classes (as calculated by the registered owner) are submitted by paper.
Scenario #2
- The registration is renewed and the base fee for one class is paid using the online renewal service; and
- on the same day, the fees for additional Nice classes (as calculated by the registered owner) are submitted by paper; however
- the goods or services have not been grouped and classed
Scenario #3
A request to renew is filed by paper, together with $400 (renewal fee under the previous Act) and $125 for an additional class (as calculated by the registered owner).
Additional Renewal Fees
The Office is looking to add the ability to pay additional Nice class fees online at the same time as submitting the Nice Classification information.
This should speed the process as the registered owner would not have to wait for an adjusted renewal fee notice to pay any outstanding fees.
Note that the amount would not be calculated automatically as the final number of classes would not be finalized.
Renewal process for registrations for which the goods or services have been grouped according to the classes of the Nice Classification system.
Renewal Fees
Where goods or services of a registration are grouped and classed, the registered owner must pay all of the fees set out in Items 14(a) or (b) of the Schedule to the Regulations.
The fee is based on the number of classes in the registration at the time of renewal.
Partial Renewal
The registration of a trademark may be renewed for some or all of the goods or services in respect of which the trademark is registered.
If a registered owner requests the renewal of only some of the goods or services listed in the register for a registration ("partial renewal"), the registration will be renewed only for those goods and services listed in the renewal request.
Partial Renewal - Online
A partial renewal can be submitted online only if the:
- Goods or services in respect of which the trademark is registered are grouped according to the classes of the Nice Classification.
- All the goods or services grouped in a class are being renewed, and
- the remaining goods or services are being deleted.
Partial Renewal – Paper
If a partial renewal is not submitted online, the Registrar will send a letter acknowledging receipt of the renewal fee.
The particulars of the partial renewal will be available, and the Registrar will issue a certificate of renewal, only after the registration or previous renewal period has expired or the remaining goods or services not being renewed are deleted.
Given the potential delay between submitting a partial renewal and receiving a certificate of renewal, registered owners are strongly encouraged to either renew near the expiry of the registration or renewal period, or delete the goods or services not being renewed at the time of the partial renewal.
Partial Renewal
Note that renewing a registration and subsequently deleting some goods or services is not considered a partial renewal as the prescribed renewal fee is based on the number of classes in the registration at the time of renewal.
Extensions of Time
The Branch has been looking for ways to render the end-to-end examination process more efficient and timely.
One of the ways to reduce pendency in examination is to amend the practice with respect to the granting extensions of time.
Automatic or unwarranted extensions of time slow down the registration process considerably.
To put things in perspective, in 2018 the Office granted more than 11,000 requests for extension of time at the examination stage alone.
The practice notice on extensions of time was amended on January 17 to remove the first six-month extension following an examiner’s report that was available for practically any reason.
Going forward, the Office will generally not grant an extension of time to file a response to an examiner’s report unless the applicant can demonstrate exceptional circumstances justifying why it is not yet possible to file a proper response.
In an effort to implement a smooth transition from the previous practice, the practice of not granting an extension of time to reply to an examiner’s report unless exceptional circumstances exist will only apply to trademark applications for which an examiner’s report has been issued on or after the publication date of this amended practice notice.
As a result, for applications for which an examiner’s report has issued prior to the publication date of January 17, the Office will generally grant the applicant one (1) extension of time of up to a maximum of six (6) months to file a response to an examiner's report, if the request is justified.
The following are examples of what could amount to an exceptional circumstance that would justify an extension of time:
No change
- Recent change in trademark agent
There has been a very recent change in the appointed trademark agent and the agent requires time to become familiar with the file. - Circumstances beyond the control of the person concerned
Examples include illness, accident, death, bankruptcy, or other serious and unforeseen circumstances. - Transfer
There is a request pending at the Office to record or register the transfer of an application or registered trademark, and said transfer would overcome a confusion objection. - Division of a Protocol application
The applicant has filed a request for the division, in respect of Canada, of the international registration on which the original Protocol application is based and is waiting on the International Bureau for notification that a divisional international registration has been created.
Amended
- Opposition
A co-pending and confusing trademark is the subject of a pending opposition proceeding. - Section 45
A registered trademark cited as confusing is subject to a pending section 45 proceeding. - Official mark
The applicant is in the process of actively negotiating a consent from the holder of an official mark.
New
- Respond to an objection which could lead to a refusal under paragraphs 37(1)(b), (c) or (d) of the Act
The applicant requires more time to consider the objection and file a proper response. The applicant may request an extension of time for this reason only once in the prosecution of the application. - Compile evidence of distinctiveness under subsection 32(1) of the Act
The applicant is in the process of compiling the sufficient evidence required to show that the trademark was distinctive at the filing date of the application. The applicant may request an extension of time for this reason only once in the prosecution of the application.
Fee for Extensions of time
The $125 fee to request an extension of time is only required where a person applies to extend the deadline or period of time that is fixed by the Act or prescribed by the Regulations.
Therefore, the fee is not required to request an extension of time to respond to an examiner’s report, as the period of time to respond is not fixed in either the Act or its Regulations.
The fee is required to request an extension of time where the applicant is considered to be in default of the prosecution of the application, as the period of time to respond to a default is fixed in section 34 of the Regulations.
Appointment of a Trademark Agent or an Associate Trademark Agent
Temporary Appointment
The temporary appointment of an agent or associate agent for the purpose of grouping the goods or services of a trademark registration according to the Nice Classification may be done using the Group Goods or Services (Nice Classification) e-service on CIPO’s website by including the details of temporary appointment and subsequent revocation in the "Closing details" section.
The undersigned has been appointed, under subsection 22(1) of the Trademarks Regulations, by the applicant or registered owner as trademark agent for the purpose of the following:
[details of request]
Upon recording by the Office of this request, our appointment as trademark agent is revoked under section 23 of the Trademarks Regulations.
The undersigned has been appointed, under subsection 22(3) of the Trademarks Regulations, by the trademark agent that resides in Canada appointed on the following trademark applications and registrations, as associate trademark agent for the purpose of the following:
[details of request]
Upon recording by the Office of this request, our appointment as associate agent is revoked under section 23 of the Trademarks Regulations, and the appointed trademark agent will remain of record.
Suggested wording for a temporary appointment and subsequent revocation can also be found in the relevant Practice Notice on the CIPO website.
Appointment of Agent on Transfers
The Office has been receiving requests for transfers under section 48 of the Act in which it is unclear on behalf of whom the request is initiated (i.e. the transferee or the transferor).
In view of the requirements in the Regulations on representation and the appointment of trademark agents, all requests for transfers under section 48 of the Act must clearly indicate whether the transferee is appointing the agent who submitted the request.
In view of the evidentiary requirements to record or register a transfer on the request of a transferee, all requests must indicate which party is requesting the transfer.
Similarly, because it is unclear on behalf of whom the request is initiated, it is often unclear whether the transferee is appointing an agent to represent them in respect of that trademark application or registration.
Without a new appointment of agent, if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated, the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person.
Without an appointment of agent to represent the new owner, the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner.
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application, applicants have two options:
- Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and, in the closing details of the application, indicate that the applicant wishes to file a divisional application, specifying which of the goods and services should appear in the divisional application; or
- File by paper, on the original application, a request to file a divisional application, specifying which of the goods and services should be limited on the original application and which should appear in the divisional application.
Inherent Distinctiveness
Types of Distinctiveness
Section 2 of the Trademarks Act:
Distinctive, in relation to a trademark, describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them.
A trademark actually distinguishes by acquiring distinctiveness through use.
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive.
What is inherent distinctiveness?
- Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated.
- A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources.
The Assessment
- An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services, assuming no use (as defined in section 4 of the Act) has occurred.
- It must also take into account the first impression of the average Canadian consumer of those goods or services.
As stated by the Federal Court in ITV Technologies Inc. v. WIC Television Ltd.:
"The inherent distinctiveness of a trademark refers to its originality. A trademark that is composed of a unique or invented name, such that it can only refer to one thing, will possess more inherent distinctiveness than a word that is commonly used in the trade."
In other words, is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark?
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely, in the ordinary course of their businesses, to desire to use the same trademark in association with the same or similar goods or services.
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it.
If research points to widespread use by others in the trade, the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source.
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources.
Raising Objection
When raising an objection, examiners must provide a clear explanation why the Registrar’s preliminary view is that the trademark is not inherently distinctive.
It is not enough to merely point to paragraph 32(1)(b) of the Act.
Examiners must indicate whether the objection relates to all the associated goods or services, or only to some.
If the objection is being raised due to use of the trademark by others in the marketplace, the results of the examiner’s research should be provided to the applicant.
These results should be limited to use which is likely to be seen by Canadian consumers.
Applications not advertised
All applications not advertised by June 17, 2019 require reassessment by an Examiner for inherent distinctiveness.
Examples
- Geographic locations
- Names of colours
- English and French
- Names and Surnames
- Laudatory
- Internet TLDs
- Forms of business association
- Generic designs
- 1 & 2-letter / -number
- Generic information
- Other examples
Geographic locations
Trademarks which are primarily geographic locations are generally not inherently distinctive, even if the place is not known for those goods or services.
London
in association with "operation of drugstores and department stores".
textual equivalent
White "X" in a filled red circle at the bottom centre of the slide.
Elbow
in association with "retail sale of snowmobiles".
textual equivalent
White check mark in a filled green circle at the bottom centre of the slide.
Names of colours
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour.
White
in association with "paper" or "toothpaste".
textual equivalent
White "X" in a filled red circle at the bottom centre of the slide.
Red
in association with "night club services".
textual equivalent
White check mark in a filled green circle at the bottom centre of the slide.
English and French
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness.
Furniture Store / Magasin De Meubles
in association with "retail sale of furniture".
textual equivalent
White "X" in a filled red circle at the bottom centre of the slide.
Multiple surnames
Two or more surnames that are not, individually, inherently distinctive are generally considered inherently distinctive when they are combined. The need for other traders to use the combination in relation to similar goods or services is relatively low.
Philpot Johnson Spratley
in association with "operation of vehicle dealership".
textual equivalent
White check mark in a filled green circle at the bottom centre of the slide.
Names and honorifics
The addition of common honorifics, either pre- (e.g. Mrs., Mr., Dr., Dame, Sir) or post-nominally (e.g. ESQ.) to a surname or full name will generally not render a trademark inherently distinctive.
Mr. Bob Johnson
in association with "tourist agencies".
textual equivalent
White "X" in a filled red circle at the bottom centre of the slide.
Laudatory
Words or phrases that laud (praise) the worth, importance or value of a good or service are generally not inherently distinctive, nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive.
- Ultimate
- Expert
- Quality
- Wonderful
- World Famous
textual equivalent
White "X" in a filled red circle at the bottom centre of the slide.
Internet TLDs and URLs
A trademark composed solely of a top-level domain ("TLD") in association with the operation of a domain-name registry or registrar services is not inherently distinctive, as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services.
.BIZ
in association with "domain name registration services".
textual equivalent
White "X" in a filled red circle at the bottom centre of the slide.
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark.
The application does not have to be in association with online services in order to be found not inherently distinctive.
Www.Postersforsale.Com
in association with "art posters" and "sale of art posters".
textual equivalent
White "X" in a filled red circle at the bottom centre of the slide.
Www.Pepsi.Com
in association with "soft drinks".
textual equivalent
White check mark in a filled green circle at the bottom centre of the slide.
Forms of business association
Words and abbreviations that describe the legal form of a business such as Limited, Company, Partnership, LLC, Ltd., GmbH, etc. generally are not inherently distinctive and do not add to the distinctiveness of a trademark.
Greenhouse Tools Ltd.
in association with "hand tools" or "retail sale of gardening equipment".
textual equivalent
White "X" in a filled red circle at the bottom centre of the slide.
Generic designs
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner.
textual equivalent
figure of grapes
in association with "wine" or "grapes".
textual equivalent
White "X" in a filled red circle at the bottom centre of the slide.
textual equivalent
healthcare services logo
in association with "healthcare services".
textual equivalent
White "X" in a filled red circle at the bottom centre of the slide.
One or two letters/numbers
Single letter or number trademarks will generally be considered not inherently distinctive, due to the likelihood of other traders needing to use a simple, unembellished single letter or number.
X
in association with "hotel services".
textual equivalent
White "X" in a filled red circle at the bottom centre of the slide.
textual equivalent
The gum 5’s logo (the number 5 grey-coloured in italics) in a black parallelogram.
in association with "chewing gum".
textual equivalent
White check mark in a filled green circle at the bottom centre of the slide.
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive.
LE
in association with "motor vehicles".
textual equivalent
White "X" in a filled red circle at the bottom centre of the slide.
39
in association with "long-distance calling card services".
textual equivalent
White "X" in a filled red circle at the bottom centre of the slide.
Generic information
Trademarks that serve only to provide generic information about, or on, any goods or services are generally not inherently distinctive.
Contents Are Hot
in association with "beverage containers" and "takeout restaurant services".
textual equivalent
White "X" in a filled red circle at the bottom centre of the slide.
Fragile
in association with "printed labels" and "boxes for packaging".
textual equivalent
White "X" in a filled red circle at the bottom centre of the slide.
I Ottawa
in association with "t-shirts" and "retail sale of novelty items".
textual equivalent
White "X" in a filled red circle at the bottom centre of the slide.
Overcoming Objection
An applicant may overcome an objection under subsection 32(1) by:
- submitting arguments that the trademark has some inherent distinctiveness;
- filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application; or
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant, the objection under subsection 32(1) will not automatically be withdrawn, as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname.
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada.
If the trademark was not used prior to the filing date, it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness.
WIPO Irregularities
Types of WIPO Irregularities:
- Rule 11 (fees)
- Rule 12 (classification of g/s)
- Rule 13 (wording of g/s)
Registered Email notification from WIPO:
textual equivalent
The image is a screenshot of an email. At the top of the page is a dark blue heading and in this heading is the Registered Email’s logo to the left (the letter "R" written in white in a filled red circle). To the right of the logo is written "Registered Email" and underneath "Certified Delivery, Content & Time". To the right into the heading is the logo followed by "Mail". Underneath the heading is the note, "This is a Registered EmailTM message from noreply@wipo.int.". A horizontal red line is separating the note from the rest of the message. Underneath the horizontal red line is written, "Ref. = 1263274601". Below is the message:
"Dear Sir, Madam,
Please find attached a notification of an irregularity issued with respect to the international trademark application with basic (application / registration) number. This electronic notification replaces the transmission of the notification by ordinary mail (please refer to the term and conditions for electronic communication at http://www.wipo.int/edocs/madrdocs/en/2011/madrid_2011_36.pdf).
Please, also note that:
1) Certain irregularities can only be corrected via the Office of Origin.
2) Fee irregularities can be corrected online at https://webaccess.wipo.int/epayment/feeDetails_en.jsp?docID=1228076101"
Rule 11 (fees) – sample wording
textual equivalent
The image is an extract from an irregularity notice from WIPO.
Irregularity(Ies) Concerning The Fees: To Be Remedied By The Applicant Or The Office Of Origin
1. The amount of the fees received is less than the amount required (Rule 9(3)). Missing amount: (see accounting statement enclosed). In order to remedy this irregularity, the missing amount should be paid to the International Bureau:
- either online, by credit card or by debiting a sufficiently credited current account opened with WIPO, at https://webaccess.wipo.int/epayment/ using reference 1301172801 ;
- or by transfer to WIPO's bank account: IBAN No. CH51 0483 5048 7080 8100 0, SWIFT code CRESCH ZZ80A, Crédit Suisse, CH-1211 Geneva 70;
- or by transfer to WIPO's postal account: IBAN No. CH03 0900 0000 1200 5000 8, SWIFT/BIC: POFICHBE;
- or by authorizing the International Bureau to debit the required amount from a sufficiently credited account opened with WIPO.
textual equivalent
The image is an extract from an irregularity notice from WIPO.
The correction of the above-mentioned irregularity(ies) should be received by the International Bureau within a three-month time limit from the date of this notification (expiring on 27 February 2020 ), failing which the international application will be considered abandoned. In that case, any fees paid in respect of the application will be reimbursed, after deduction of an amount corresponding to one-half of the basic fee.
For any further information on this notice, please feel free to contact us using Contact Madrid (http://www.wipo.int/madrid/en/contact/).
Rule 12 (classification of g/s) – sample wording
textual equivalent
The image is an extract from an irregularity notice from WIPO.
irregularity(ies) concerning the classification of goods and services: to be remedied by the office of origin (Rule 12).
2. The International Bureau considers that the goods and/or services listed in the international application are not grouped in the appropriate classes of the International Classification of Goods and Services (Rule 9(4)(a)(xiii)). The International Bureau proposes therefore to transfer the following terms:
"greenhouses of plastic" from class 6 to class 19 - by analogy with position 190167 "greenhouses, transportable, not of metal" of the alphabetical list of the International Classification of Goods and Services.
The proposed grouping may entail the payment of further fees (see attached accounting statement).
textual equivalent
The image is an extract from an irregularity notice from WIPO.
An opinion on this proposal may be communicated to the International Bureau. Any such opinion must be communicated Through The Office Of Origin within three months from the date of the present notification, that is by 15 February 2020. Failing this, the mark will be registered with the classification and grouping proposed by the International Bureau. However, if this proposal entails the payment of further fees and such fees are not paid within four months from the date of the present notification, the international application will be considered abandoned.
Rule 13 (wording of g/s) – sample wording
textual equivalent
The image is an extract from an irregularity notice from WIPO.
Irregularity(ies) concerning the indication of goods and services: to be remedied by the office of origin1. The International Bureau considers that the following term(s) of the list of goods and/or services is/are too vague for the purposes of classification (Rule 13): (class 42)
1) "3D laser imaging services"
2) "finite element analysis (FEA) and computational fluid dynamic (CFD) simulation services"
3) "consultation services, namely, design support and review for refractory design and installation"
The International Bureau suggests therefore the following:(class 42)
1) "3D laser imaging services [digitalisation and scanning of images]"
2) "research services in the field of finite element analysis (FEA) and computational fluid dynamic (CFD) simulation"
3) "design consultation services relating to the design support and review for refractory design and installation"
Your answer must not be sent directly to wipo but through yournational office.
textual equivalent
The image is an extract from an irregularity notice from WIPO.
A proposal as to different term(s) may be communicated to the International Bureau. Any such proposal must be communicated Through The Office Of Origin, within three months from the date of the present notification, that is by 22 February 2020 If no proposal acceptable to the International Bureau is made within this period, the International Bureau will include in the international registration the term(s) as appearing in the international application, with an indication to the effect that, in the opinion of the International Bureau, the specified term(s) is/are too vague for the purposes of classification.
- Deadlines to respond:
- To CIPO
- To WIPO
- Consequences of not responding
- Rule 11 – abandoned AIR
- Rule 12 – WIPO classification recorded
- Rule 13 – WIPO includes note in list of g/s
Responding to WIPO Irregularities
Log in to your ISED account
textual equivalent
The image is a screen shot of the ISED account login page. There is a left panel and a centre portion titled "Sign in to Trademark E-Filing". The left panel is titled "Trademark E-Filing", and has two tabs: "Online Help" and "Problem report". The central portion is composed of a white box divided in two sections. "Sign in" it the title of the left portion of the white box, two text boxes with "Username (required)" and ""Password (required)" top a dark blue button "Sign in". The right portion of the white box is titled "Sign up" and includes the following: "By creating a new account, you can securely access all Innovation, Science and Economic Development Canada online services. One username. One password". Underneath, there is a hyperlink titled "Create an account".
Follow path to access Madrid eFiling
textual equivalent
The image is a screen shot of the page that appears after a user has logged in the Trademark E-Filing". The left panel is titled "Trademark E-Filing", and the tabs are, in order, "Create a new application", "Amend a previously filed application", "Create an application for International Registration" highlighted in yellow, "Group goods or services (Nice Classification), "Work in progress", "Cart", "Transaction history", "Online help" and "Problem Report". The central portion of the image is titled "Trademark E-Filing" and a subtitle underneath states "The following options are available:" over four rectangles. The first rectangle includes a dark grey circle with a paper sheet icon with the following: "New: Create a new application". The second rectangle includes a dark grey circle with a paper sheet and pen icon with the following: "Amend: Amend a previously filed application", the third rectangle is highlighted in yellow and includes a dark grey circle with a globe icon and the following text: "International: Create an application for International Registration". The fourth and last rectangle includes a dark grey circle with a toolbox icon and the following text: "Group: Group goods or services (Nice Classification)".
"Status" changes for the AIR
textual equivalent
The image is a screen shot of the Madrid eFiling homepage. A few applications for international registration appear in a table. Above the table, on the left, there is a button labeled "New application". Right of this button, there is the word "Search" next to an empty text box. Above the table, to the right, the words "Show" and "entries" surrounds a drop-down menu with the number 10 selected. The table is divided in eight columns; "Number", "Office", "Reference", "Mark text", "last updated", "Paid", "Status", and the last column has no title. The second row has a drop down menu under "Paid" and "Status". In the "Status" column, the statuses "Irregularity examination" (in green), "Irregularity pending" (in red) and "Irregularity correction" (in red) are highlighted in yellow.
"WIPO Irregularities" Tab
textual equivalent
The image is a screenshot of the page in Madrid eFiling that appears after the user clicks on the application for international registration with a status "Irregularity pending". The image includes a left panel and a central portion titled "Irregularities issued by WIPO". The left panel has the following tabs; "Basic application or registration", "Designated Contracting Parties", "Applicant(s)", "Representative", "Languages and correspondence", "Mark", "Goods and services", "Limitations", "Claimed priorities", "Attachments", "Fee calculations", "WIPO irregularities", "Validation". The tab "WIPO irregularities" is selected and highlighted in yellow. Under the title of the central portion, this text appears: "A response must be submitted to WIPO, via the office of origin, before January 31, 2020". The first irregularity appears below, above the text "Answer" which is above a text box. Under this text box, there are three buttons; "Add files", "Start all uploads", "Cancel all uploads". The second irregularity is identified below. There is another text box with the text "Answer" above it and with three buttons; "Add files", "Start all uploads", "Cancel all uploads". In the right low corner of the page, there are two buttons: "Fee calculations" and "Validation".
"WIPO Irregularities" Tab – Attach response
textual equivalent
The image is a screenshot of the page in Madrid eFiling that appears after the user has clicked on the "Add files…" button on the previous page. The image includes a left panel and a central portion titled "Irregularities issued by WIPO". The left panel has the following tabs: "Basic application or registration", "Designated Contracting Parties", "Applicant(s)", "Representative", "Languages and correspondence", "Mark", "Goods and services", "Limitations", "Claimed priorities", "Attachments", "Fee calculations", "WIPO irregularities", "Validation". The tab "WIPO irregularities" is selected and highlighted in yellow. Under the title of the central portion, this text appears: "A response must be submitted to WIPO, via the office of origin, before January 31, 2020". The first irregularity is identified below, above the text "Answer" which is above a text box. Under this text box, a grey box appeared with the name of a file that was added by clicking on the button "Add files…". Below the grey box, there are three buttons; "Add files…", which is highlighted in yellow, "Start all uploads", and "Cancel all uploads". In the grey box, there are two other buttons "Start upload", which is highlighted in yellow, and "Cancel upload". The second irregularity is identified underneath. There is another text box with the text "Answer" above it and with three buttons; "Add files", "Start all uploads", "Cancel all uploads". In the right low corner of the page, there are two buttons: "Fee calculations" and "Validation".
"WIPO Irregularities" Tab – Enter response in "Answer" box
textual equivalent
The image is a screenshot of the page in Madrid eFiling that appears after the user clicks on the application for international registration with a status "Irregularity pending". The image includes a left panel and a central portion titled "Irregularities issued by WIPO". The left panel has the following tabs; "Basic application or registration", "Designated Contracting Parties", "Applicant(s)", "Representative", "Languages and correspondence", "Mark", "Goods and services", "Limitations", "Claimed priorities", "Attachments", "Fee calculations", "WIPO irregularities", "Validation". The tab "WIPO irregularities" is selected. Under the title of the central portion, this text appears: "A response must be submitted to WIPO, via the office of origin, before January 31, 2020". The first irregularity is identified below, above the text "Answer" which is above a text box. In the text box, the words "This is my answer." Were typed in. The text box area is highlighted in yellow. Under this text box, there are three buttons; "Add files", "Start all uploads", "Cancel all uploads". The second irregularity is identified below. There is another text box with the text "Answer" above it, the words "This is my answer." and with three buttons; "Add files", "Start all uploads", "Cancel all uploads". This second text box is also highlighted in yellow. In the right low corner of the page, there are two buttons: "Fee calculations" and "Validation".
Validate (HTML/PDF on next screen)
textual equivalent
The image is a screenshot of the page in Madrid eFiling that appears after the user has clicked on the "Add files…" button on the previous page. The image includes a left panel and a central portion titled "Irregularities issued by WIPO". The left panel has the following tabs; "Basic application or registration", "Designated Contracting Parties", "Applicant(s)", "Representative", "Languages and correspondence", "Mark", "Goods and services", "Limitations", "Claimed priorities", "Attachments", "Fee calculations", "WIPO irregularities", "Validation". The tab "WIPO irregularities" is selected. Under the title of the central portion, this text appears: "A response must be submitted to WIPO, via the office of origin, before January 31, 2020". The first irregularity is identified below, above the text "Answer" which is above a text box. Under this text box, a grey box appeared with the name of a file that was added by clicking on the button "Add files…". Below the grey box, there are three buttons: "Add files…","Start all uploads", and "Cancel all uploads". In the grey box, there are two other buttons "Start upload" and "Cancel upload". The second irregularity is identified underneath. There is another text box with the text "Answer" above it and with three buttons; "Add files", "Start all uploads", "Cancel all uploads". In the right low corner of the page, there are two buttons: "Fee calculations" and "Validation", which is highlighted in yellow.
Send (MeF sends response to CIPO)
textual equivalent
The image is a screenshot of the page in Madrid eFiling that appears after the user has clicked on the "Validation" button from slide 139. The title is "Request for International registration". The image has a left side panel and a centre portion. The left panel has the following tabs; "Basic application or registration", "Designated Contracting Parties", "Applicant(s)", "Representative", "Languages and correspondence", "Mark", "Goods and services", "Limitations", "Claimed priorities", "Attachments", "Fee calculations", "WIPO irregularities", "Validation". The tab "Validation" is selected. The centre portion of the image starts with "WIPO has identified one or more irregularities. When complete, click the ‘’Send’’ button to return the application to WIPO via the office of origin. Below this sentence, there is a title "Validation" with the words "Status" and "Paid" underneath. Below, there is a PDF document logo with the words "Requests (HTML)" and "Request (PDF). The title "Validation, the PDF logo and the words are encompassed in a yellow heighted square". In the right low corner of the page, there are two buttons; "WIPO irregularities" right of an arrow pointing left and "Send", which is highlighted in yellow.
CIPO Examiner:
Reviews response from applicant
- If acceptable, forwards it to WIPO; or
- If not acceptable, communicates with applicant (applicant will have to respond)
New email templates!
A Few More Madrid Items
Madrid Best Practices
Madrid eFiling – Cannot import basic application/registration "Mark not found"
textual equivalent
The image is a screenshot of the Practical Guide on Madrid eFiling and reads:
"When attempting to import a basic application or registration, you may encounter the following error message:
‘’Mark not found’’
This error message may relate to any of the following:
- Searching by registration number is not supported.
- Requested basic application/registration not found. You must provide a valid application number.
- Error uploading the requested basic application/registration according to specifications (data mapping issue).
- Goods/services are not all grouped according to the classes of the Nice Classification in the basic application/registration.
- Basic application/registration is inactive.
- Requested application number is invalid. (Format is: number(extension))
- The basic application or registration is not eligible.
- According to the type of trademark, the visual representation of the trademark is missing.
- Missing representation of the trademark for non-word or standard character trademark."
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system:
- Send the Nice Classification information through e-amend (application), using the Group goods or services (registration), or by fax; AND
- Send notification of the request to madrid@canada.ca
For any other question regarding an AIR that is pending with CIPO, send an email to: madrid@canada.ca
Status of AIR after certification by CIPO
textual equivalent
The image is a screenshot of the "Contact Madrid" form available on WIPO’s website. The title is "Contact Madrid". Below the title, there is the following text: "Use this form to make an enquiry or to submit a form/response to WIPO. To get started tell us who you are."
Below, in bold: "I am:", over a drop-down menu. "a trademark holder, representative of any other interested party" is selected in this drop-down menu.
Below, in bold: "My request concerns:" over a drop-down menu. "the status of an international application or of a request to change an existing registration" is selected in this drop-down menu.
Below, there is an orange box. In the orange box, the following text appears: "Instant help: Use Madrid Monitor to track the status o your application/request as it moves through WIPO’s examination process. Check the average pendency rates here."
Below, in bold: "Do you still need help on the status?" over two options: "Yes" or "No".
textual equivalent
The image is a screenshot of the "Contact Madrid" form available on WIPO’s website. At the top of the page, the text "Do you still need help on the status?" appears above two options "Yes" or "No" from the previous slide, slide 146. The "Yes" is selected. Below, "Reference number(s)" in bold is above a blank text box. Underneath, the words "Your request" sit above a bigger blank text box. Below this big blank text box, there are four text boxes with the following titles over them; "Email:", "Confirm Email:", "Company", and "Other contact details (optional):". At the centre bottom of the page, there is a dark blue button labelled "Submit".
Status of AIR after certification by CIPO
textual equivalent
The image is comprised of two line charts. At the top of the image, there is the title: "Madrid Pendency Rates" followed by subtitle: "Key Figures as of 31 December 2019" The left graph represents the yearly average of pendency of international applications in comparison to the historical average. From 2008 to 2012, the yearly average was below the historical average. In 2012, the yearly average went above the historical average and went under afterwards until 2014. As o 2014, the yearly average of Madrid pendency rates was above the historical average. The right graph shows that since December 2018, the monthly average has been continuously decreasing in comparison to the historical average (2008-2018) to reach 33 days of pendency as of December 2019.
Once the AIR is registered and has an IR #, changes to the IR must be made directly with WIPO, for example:
- Subsequent designation
- Change of ownership
- Change of address
- Limitation
- Cancellation
WIPO’s "Contact Madrid" e-service
When designating Canada, applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examiner’s Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
When Canada is designated, CIPO sends a courtesy letter to the WIPO representative informing them of CIPO’s correspondence rules.
Sent with the acknowledgement notice and client proof sheet.
Process to appoint a Canadian agent on a Protocol application is same as the national process
If a Canadian trademark agent is not appointed, the following are sent directly to the applicant:
- courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
- all future correspondence from CIPO
textual equivalent
The image is a table divided in three columns and 5 rows that explains to whom correspondence will be sent on a Protocol application. Columns are titled from left to right: "Correspondence", "Canadian Trademark Agent appointed", and "Canadian Trademark Agent not appointed". The second row has the following text: "Total Provisional Refusal (including Examiner’s First Report)", "Sent to WIPO and courtesy copy sent to Canadian Trademark Agent", and "Sent to WIPO and courtesy copy sent to Applicant". The third row has the following text: "Subsequent Examiner’s Report", "Sent to Canadian Trademark Agent", and "Sent to Applicant". The fourth row has the following text: "Refusal Letter", "Sent to Canadian Trademark Agent", and "Sent to Applicant". The fifth row has the following text: "Confirmation of Total Provisional Refusals (sent when refusal appeal period is expired)", "Sent to WIPO", and "Sent to WIPO".
textual equivalent
The image is a table divided in three columns and 5 rows that explains to whom correspondence will be sent on a Protocol application. This table is the continuation of the table from the previous slide. Columns are titled from left to right: "Correspondence", "Canadian Trademark Agent appointed", and "Canadian Trademark Agent not appointed". The second row has the following text: "Approval Notice", "Sent to Canadian Trademark Agent", and "Sent to Applicant". The third row has the following text: "Default Notice", "Sent to Canadian Trademark Agent", and "Sent to Applicant". The fourth row has the following text: "Statement of Grant of Protection (including Canadian Registration Certificate)", "Sent to WIPO and courtesy copy sent to Canadian Trademark Agent", and "Sent to WIPO and courtesy copy sent to Applicant".
When filing an AIR, "Filing language" must be the same as the language of the goods or services in the basic application/registration.
By default it is language of user’s profile
textual equivalent
The image is a screenshot of the Madrid eFiling start page to file an application for international registration. The image has a left side panel and a centre portion. The left panel has the following tabs; "Basic application or registration", "Designated Contracting Parties", "Applicant(s)", "Representative", and "Languages and correspondence". The tab "Basic application or registration" is selected. The title "General" is located at the top of the centre portion. Underneath this title, it reads: "Filing language*" (asterisk is red) and there is a drop down menu on its right. "English" is selected in the drop-down menu and the whole line is highlighted in yellow. Below "Filing language", it reads "Reference" and on its right, there is a text box. A second title appears below "Basic application or registration".
Pop-up message in MeF in the "Basic application or registration" tab:
textual equivalent
The image is a screenshot showing a pop-up window that reads "The Goods and services are in English in the imported mark. Switch to English as the filing language?" In the top right corner is an "x" button and in the bottom right corner are the buttons, in order, "Yes" and "No".
If filing language was not changed in the "Basic application or registration" tab - error message in "Goods and services" tab
textual equivalent
The image is a screenshot of the page in Madrid eFiling that appears if the language has not been changed following the message from the previous slide. The title is "Request for International registration". The image has a left side panel and a centre portion. The left panel has the following tabs; "Basic application or registration", "Designated Contracting Parties", "Applicant(s)", "Representative", "Languages and correspondence", "Mark", "Goods and services", "Limitations", "Claimed priorities", "Attachments", "Fee calculations", "WIPO irregularities", "Validation". The tab "Goods and services" is selected. In the centre portion of the image, there is an error message box stating: "An error occurred when processing the request All items must be translated". In the upper right corner of the box, there are two buttons: "Hide details" and "Close". Below, there are a flat white rectangle with a grey outline on the left and a drop down menu to the right. In this drop-down menu, "TMClass" is selected. Below this white rectangle, the goods or services appear in red, with the Nice class being identified in blue. Above the list of goods or services, the text "Registration is sought for the SAME Goods and services contained in the basic application or registration" appears right of a checked box.
Can no longer modify filing language (greyed out/drop-down menu doesn’t open)
Must create a new AIR and select correct filing language
textual equivalent
The image is a screenshot of the page in Madrid eFiling that appears if the applicant has not changed the language and click on the tab "Basic application or registration" during the process of filing the application for international application. The title is "Request for International registration". The image has a left side panel and a centre portion. The left panel has the following tabs; "Basic application or registration", "Designated Contracting Parties", "Applicant(s)", "Representative", "Languages and correspondence", "Mark", "Goods and services", "Limitations", and "Claimed priorities. The tab "Basic application or registration" is selected. The title "General" is located at the top of the centre portion. Underneath this title, it reads: "Filing language*" (asterisk is red) and there is a drop down menu on its right. "French" is selected in the drop-down menu, but the drop-down menu is deactivated. Below "Filing language", it reads "Reference" and on its right, there is a text box. A second title appears below "Basic application or registration". Information of the basic application or registration appears below. In the bottom right corner, there is a button" Import another trademark". Below that button, there is another button with an arrow pointing right "Designated Contracting parties".
"Filing language" is different from "correspondence language" with WIPO/CIPO/EUIPO that can be different from the language of goods or services
textual equivalent
The image is a screenshot of the page in Madrid eFiling that appears if the applicant has not changed the language and click on the tab "Basic application or registration" during the process of filing the application for international application. The title is "Request for International registration". The image has a left side panel and a centre portion. The left panel has the following tabs; "Basic application or registration", "Designated Contracting Parties", "Applicant(s)", "Representative", and "Languages and correspondence". The tab "Languages and correspondence" is selected. The title "Languages" is located at the top of the centre portion. Underneath this title, it reads: "Preferred correspondence language with WIPO*" (asterisk is red) and there is a drop down menu on its right. "English" is selected in the drop-down menu. Below this line, it reads "Preferred correspondence language with office of origin*" (asterisk is red) and there is a drop down menu on its right. "English" is selected in the drop-down menu. Below this second line, it reads: "Second language for European Union (EUIPO)* (asterisk is red) and there is a drop down menu on its right. Nothing is selected in this third drop-down menu. The title "Correspondence" appears underneath.
AIR priority date can be the basic application filing date if within 6 month period
Do not wait until the last day to:
- File the AIR - may lose priority date!
- Respond to the WIPO Irregularity Notification - CIPO needs time to review and correct the response if necessary
Questions?
Visit the trademarks page for more information.
2020
Aussi offert en français sous le titre Le régime de marques de commerce du Canada : Une revue depuis l’entrée en vigueur.