Demystifying the transition
Deep dive of the transitional provisions
From: Canadian Intellectual Property Office
Canadian Intellectual Property Office
October 12, 2018
Building a prosperous and innovative Canada
- Innovation and Intellectual Property
- Plans and Strategies
- Changing Gears Towards Implementation
- Un-complicating the Transitional Provisions
- Next Steps
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."
The innovation and skills plan
The Innovation and Skills Plan (2017) advances an agenda to make Canada a global centre for innovation.
- Focuses on people and addresses the changing nature of the economy to ensure it works for all Canadians.
- Agenda to build Canada as a world-leading innovation economy that will create jobs and grow the middle class.
Intellectual property strategy
- Investment of $85.3 million over five years to help Canadian businesses, creators, entrepreneurs and innovators understand, protect and access IP.
- Supports access to the best possible IP resources through:
- IP awareness, education and advice;
- strategic IP tools for growth; and,
- IP legislation.
Harmonizing Canada's IP system with international standards
- Canada is a trade and investment oriented economy and protecting and leveraging IP is key for success.
- Canada is joining five key international IP treaties – the Hague Agreement, the Madrid Protocol, the Singapore Treaty, the Nice Agreement for Trademarks, and the Patent Law Treaty.
- Helping Canadian businesses looking to enter or expand their presence in international markets:
- Faster, simpler, and cost-effective way to acquire protection in multiple countries.
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
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
2nd worldwide for technological and economic value
1,000 + employees make up CIPO's highly skilled workforce
CIPO: five strategic priorities
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
- Drafting of new Trademarks Regulations completed
- Focus now is implementation and operational readiness
- Drafting new Practice Notices
- Training of Operations and Examination staff
- Updates to information guides, the Trademarks Examination Manual, existing practice notices, all web pages
- Formal accession to the three trademarks treaties
New practice notices
- During our engagement activities, we heard that some of the provisions found in the Regulations were challenging to understand
- Draft practice notices on challenging topics provide guidance on the processes and obligations of the modernized trademark regime
- A guide has been drafted to help understand the transitional provisions
- The guide is divided into four sections.
- Each section details how applications will be dealt with depending on where they are in the registration process on the coming-into-force (CIF) date.
1 Filing date not granted
- Applications which have been received by the Office but have not met the filing requirements set out in Rule 25 of the current Regulations will be re-assessed under the requirements in section 33 of the amended Act.
- If an application was not granted a filing date prior to the CIF date but does meet the requirements under new subsection 33(1), the filing date will be the CIF date.
- Lack of a mailing address for the applicant but an email address or phone number is provided;
- An incomplete claim;
- An application for a trademark consisting of a design which did not include the drawing but contained only a written description.
Requirements still missing
- If all requirements under new subsection 33(1) of the Act were not provided by the CIF date, the Registrar will issue a notice to the applicant.
- Applicants will have 2 months from the date of the notice to correct the deficiencies.
- If the applicant does not submit the outstanding items within those 2 months, the application will be deemed never to have been filed.
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
- Applications which received a filing date but have not yet been advertised before the CIF will be subject to most provisions of the amended Act.
- Applications will be re-assessed to ensure they meet the registrability requirements of the amended Act.
- For example, applications that have:
- been filed but not assigned to an Examiner;
- an outstanding Examiner's report;
- a reply to an Examiner's report
Basis for registration
- All references to a basis of registration (use; intention to use; use and registration abroad) have been removed in the amended Act.
- Applications not advertised at the CIF date can retain any use-related claims, but the bases will not appear in the advertisement at this stage. An applicant can request that the bases be deleted from the application.
- Certified copies of foreign registrations are no longer required.
Not inherently distinctive
- The Registrar will be able to refuse trademarks which are not inherently distinctive under new paragraph 37(1)(d).
- Applications not advertised by the CIF date will require reassessment by an Examiner for inherent distinctiveness under new subsection 32(1) of the Act.
- Applicants will be given the opportunity to furnish the Registrar with evidence that the trademark was distinctive at the date of filing of the application.
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.
- As this provision has been removed from the Act, applications which have not been advertised by the CIF date may not claim the benefit of section 14 to overcome an objection under paragraphs 12(1)(a)/(b).
- The application must be amended to delete this claim.
- Use of a certification mark prior to the filing date is no longer a requirement under the amended Act.
- Applications for certification marks filed on the basis of proposed use prior to the CIF date can proceed to advertisement if all requirements are met and there are no outstanding objections.
New subsection 12(2)
- The Registrar will be able to object to the registration of a trademark if its features are dictated primarily by a utilitarian function.
- Applications which have not been advertised prior to the CIF date will require reassessment by an Examiner to determine if the trademark contravenes new subsection 12(2) of the Act.
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:
- three-dimensional shape, or
- mode of packaging goods.
- Under the amended Act, goods and services in an application must be grouped according to the Nice Classification.
- Applications not advertised at the CIF date will need to be amended to properly group and class the goods or services.
- The concept of "associated trademarks" will no longer exist in the amended Act.
- At the CIF date, information pertaining to associated trademarks will be removed for all applications and registrations.
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:
- 3-D shape, hologram, moving image, mode of packaging, sound, scent, taste, texture or positioning of a sign, a statement must be made;
- if colour is claimed as a feature of the trademark;
- exclusively of one colour or a combination of colours
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
- Trademarks advertised or allowed prior to the CIF date will be subject to most of the provisions of the current Act.
- Applications will no longer require a Declaration of Use prior to registration
- For applications not yet registered at the CIF date:
- The registration fee of $200 from the current Regulations must still be paid
- If this fee is paid, it is deemed to have been paid for all original and divisional applications.
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
- In the case of a divisional application filed after advertisement in respect of a word mark or a distinguishing guise:
- the divisional application must, at the time of its filing, include a statement that the applicant wishes the trademark to be registered in standard characters;
- or that the trademark consists in whole or in part a three-dimensional shape or mode of packaging goods, as applicable.
- These statements are required since it will only be permissible to add or delete these statements if the application has not been advertised and the trademark remains substantially the same.
- If merged, the resultant "type" of merged registration will be either a standard character, a three- dimensional shape or a mode of packaging goods, as applicable.
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.
- If the registration fee is processed prior to the CIF date, the registration will be granted an initial 15-year term.
- If the registration fee is processed on or after the CIF date, the registration will be granted a 10-year term.
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
- If a trademark was registered prior to the CIF and the goods or services are not grouped according to the classes of the Nice Classification, the Office will issue a notice under section 44.1 of the amended Act.
- The registered owner will have 6 months after the date of the notice to furnish the Registrar with a statement of goods or services grouped according to the Nice Classification.
Timing of renewal
If the renewal is requested after the CIF and the registration or renewal expired prior to the CIF date:
- old renewal fee ($350 or $400) applies;
- renewal period is 15 years;
- owner not required to group and class goods or services according to Nice Classification; and
- Registrar will send notice shortly after renewal requiring grouping of goods and services according to Nice Classification (where applicable)
If renewal was requested and processed before the CIF date and registration or renewal expires after the CIF date:
- old renewal fee applies;
- grouping of the goods or services is not required until a notice under section 44.1 issues; and
- if the renewal period granted was for 15 years, it will be amended to 10 years.
If a renewal is requested after the CIF date:
- new renewal fee applies;
- renewal period is for 10 years; and
- registered owner will be required to group and class goods or services according to Nice.
- In all cases where the goods or services of a registration have not been grouped and classed and where the new renewal fees apply, the prescribed fee will be the basic renewal fee for the first class.
- Where the goods or services have been grouped and classed, the complete fee for all classes is required.
- If fees are not paid or if the goods or services are not grouped and classed, the Registrar may expunge the registration.
- Revision to existing practice notices
- Updates to the Trademarks Examination Manual
- Canada Gazette Part II publication
- Coming into Force date
- Continued stakeholder engagement:
- Ongoing information sessions
- Date modified: