Language selection

Search

Demystifying the transition
Deep dive of the transitional provisions

From: Canadian Intellectual Property Office

Trademarks Branch
Canadian Intellectual Property Office

IPIC conference
October 12, 2018

Building a prosperous and innovative Canada

Presentation overview

Innovation and intellectual property are key government priorities

"We know IP is a critical ingredient in helping Canadian businesses reach commercial success. Canada's IP Strategy will make sure Canadians know the value of their intellectual property and how to leverage it to innovate, increase profits and create middle-class jobs."

Minister Bains, Innovation Science and Economic Development
(April 26, 2018)

The innovation and skills plan

The Innovation and Skills Plan (2017) advances an agenda to make Canada a global centre for innovation.

Intellectual property strategy

Harmonizing Canada's IP system with international standards

CIPO: helping make Canada a global centre of innovation

SMEs owning IP

60% more likely to be high-growth SMEs
4x more likely to export

Source: Industry Canada, Survey on financing and growth of SMEs, 2014

IP-intensive industries contribute $332B to Canada's GDP and 2 million jobs in Canada

ISO 9001:2015 certification - Our ISO certification positions Canada as a global leader in the delivery of high-quality patents

Canadian patents

2nd worldwide for technological and economic value

Source: Organisation of Economic Cooperation and Development, Enquiries into Intellectual Property's Economic Impact, 2015

1,000 + employees make up CIPO's highly skilled workforce

Source: CIPO Human Resources Plan, March 2017

CIPO: five strategic priorities

Advance innovation

Develop a national IP strategy through international collaboration and evidence- based policies

Deliver quality and timely IP rights

Provide IP rights and services that respond to client and marketplace needs

Build IP awareness and education

Deliver IP education and awareness products and services

Offer a modern service experience

Modernize and digitize our services

Foster an agile and high- performing organization

Attract and retain an engaged and highly skilled workforce

CIPO's five-Year Business Strategy 2017-2022

Changing gears towards implementation

New practice notices

Transitional provisions

1 Filing date not granted

Examples

Requirements still missing

Payment of fees

Given the changes to the fee structure on the CIF date, if the only outstanding requirement is the prescribed filing fee under paragraph 33(1)(f) of the Act, the Registrar will send a notice to the applicant outlining the deficiency unless the application contained a general authorization to charge a deficiency.

2 Filing date granted prior to CIF

Basis for registration

Not inherently distinctive

Division

Applications filed but not yet advertised can be divided so long as, at the date the divisional application is filed, the divided goods or services are within the scope of the original application at its filing date.

Section 14

Certification marks

New subsection 12(2)

Distinguishing guise

As the amended Act no longer includes a definition of "distinguishing guise", any application for a guise not advertised at the CIF date will require amendment to indicate that the trademark consists of either a:

Nice classification

Associated trademarks

Standard characters

An application filed before, but not advertised on, the CIF date may be amended to add a statement that the applicant wishes the trademark to be registered in standard characters, but only if the trademark remains substantially the same.

Non-traditional trademarks & colour

Applications filed before, but not advertised on, the CIF date may be amended to add a statement as referred to in paragraphs 31(e) to (g) of the amended Regulations, but only if the trademark remains substantially the same, namely:

  1. 3-D shape, hologram, moving image, mode of packaging, sound, scent, taste, texture or positioning of a sign, a statement must be made;
  2. if colour is claimed as a feature of the trademark;
  3. exclusively of one colour or a combination of colours

Fees

The filing fee for applications filed before the CIF will be the fee under the previous Tariff of Fees ($250 if submitted online; $300 in any other case) and the new fee per additional Nice class will not apply.

3 Advertised and allowed

No need to group and class goods or services

The grouping of the goods or services according to the classes of the Nice Classification will not be required for an application that was filed and advertised prior to the CIF date since it is only required for the purposes of advertisement, renewal or following a notice issued under section 44.1 of the amended Act.

Division after advertisement

Applications filed and advertised can be divided so long as, at the date the divisional application is filed, the divided goods or services are within the scope of the original application on the day on which the divisional application is filed.

*Reflects legislative changes contained in Bill C-86

Term of registration

For applications filed prior to the CIF, the term of registration (10 or 15 years) will depend on the date on which the Registrar has processed the registration fee.

Examples

4 Registered prior to CIF

During the transition to the new Act, the fee, renewal term, and requirement to group and class goods or services according to Nice Classification will be dependent on several factors.

Group and class goods or services

Timing of renewal

If the renewal is requested after the CIF and the registration or renewal expired prior to the CIF date:

If renewal was requested and processed before the CIF date and registration or renewal expires after the CIF date:

If a renewal is requested after the CIF date:

Fees

Next steps

Date modified: