Canada's Modernized Domestic Trademark Regime Explained

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Presentation overview

Towards implementation

Focus now is implementation and operational readiness

Non-traditional trademarks

The amended Trademarks Regulations reflect the requirements for the representation of non-traditional trademarks, particularly with respect to sound, scent, texture, moving image, 3D and hologram trademarks.

Requirements summary

Representation vs description
Trademark type Representation Description
Standard Characters Yes No
Design Yes No
Colour per se Yes Yes
3-D Yes Optional
Positioning of a sign Yes Yes
Hologram Yes – Electronic or static Yes
Moving Image Yes – Electronic or static Yes
Sound Yes – Sound Yes
Taste No Yes
Scent No Yes
Texture Optional Yes
Mode of Packaging Yes Yes

Amendment of an application for the registration of a trademark

The amended Regulations provide applicants with more flexibility to amend an application prior to registration.

Amendment of applications

Identity of an applicant

Paragraph 35(2)(a)

Must not change the identity of the applicant unless:

Examples

Acceptable circumstances:

Examples of an "error in the applicant's identification" include, but are not limited to:

Representation or description

Paragraph 35(2)(b)

Must not change the representation or description of the trademark unless:

Goods or service

Paragraph 35(2)(c)

Must not broaden the statement of goods or services beyond the scope of:

Divisional application

Paragraph 35(2)(d)

Must not add an indication that the application is a divisional application

Statements

Paragraph 35(2)(e)

Must not add or delete a statement that the trademark is in standard characters, a non-traditional trademark, or a colour trademark unless:

Certification marks

Paragraph 35(2)(f)

Must not add or delete a statement that the trademark is a certification mark after the application is advertised

Dividing applications and merging registrations

A divisional application is a separate application that contains goods or services that have been divided out from the original application into a new application.

Why make a request?

A divisional application can be filed for reasons which include, but are not limited to:

Making the request - Domestic

Scope of goods or services

The scope of goods or services that can be divided will depend on where the application is in the registration process.

Example

An initial application is filed in association with "clothing, namely, jackets, pants, sweaters and t-shirts, and casual footwear".

At some point prior to advertisement the application is limited by removing "sweaters".

The applicant cannot file a divisional application prior to advertisement for "clothing namely, hosiery" as it would extend the goods outside the scope of the original application on its filing date.

Scope of goods or services

If a divisional application is filed after the original application has been advertised, the goods or services in the divisional application must be within the scope of the original application on the day on which the divisional application is filed.

Example

An initial application is filed in association with "clothing, namely, jackets, pants, sweaters and t-shirts, and casual footwear".

Prior to advertisement, the application is limited to remove the goods "casual footwear".

The applicant may not file a divisional application for "casual footwear" after advertisement in an effort to circumvent possible opposition proceedings.

Payment of fees

Example #1
Example #1 - Text version

The diagram visually represents a scenario in which an original application has been divided twice to add two divisional applications with an end total of three applications. In this example, the original application initially had goods or service that fall into three Nice classes and each application resulting from the division included one of the classes initially found in the original application. The end result is that each of the applications now contains goods or services that fall in only one class. The diagram shows that $330 was paid on the original application when it was filed for which a total of $530 was due. Therefore, $200 is due before any of the three applications can proceed to advertisement.

Example #2
Example #2 - Text version

The diagram visually represents a scenario in which an original application has been divided twice to add two divisional applications with an end total of three applications. In this example, the original application initially had goods or services that fall into three Nice classes and each application resulting from the division, included one of classes initially found in the original application. The end result is that each of the applications now contains goods or services that fall in only one class. The diagram shows that $530 was paid on the original application when it was filed for which a total of $530 was due. Therefore, all three applications can proceed to advertisement.

Example #3
Example #3 - Text version

The diagram visually represents a scenario in which an original application has been divided twice to add two divisional applications with an end total of three applications. In this example, the original application initially had goods or services that fall into three Nice classes and each application resulting from the division included one of the classes initially found in the original application. The diagram shows that $330 was paid on the original application when it was filed for which a total of $530 was due. Furthermore, $100 was paid for each of the two divisional applications. Therefore, all three applications can proceed to advertisement.

Steps deemed to have been taken

Subject to the exceptions listed in subsection 40(2) of the Trademarks Regulations, any action taken in respect of the corresponding original application up to and including the day on which the divisional application is filed, is deemed to be an action taken in respect of the divisional application.

Example #1

If an examiner's report has issued on the original application before a divisional application was filed, the deadline to respond to the report will also apply to the divisional application and the Office will not re-issue a new examiner's report.

Example #2

If a transfer has been requested on the original application before a divisional application was filed, but could not be processed due to missing information, the transfer will be deemed to have been requested on the divisional application. Once the missing information has been provided, the request will be processed on both the original and divisional applications. Please note that the fee listed in item 8 of the Tariff of Fees will have to be paid on each divisional application.

Steps deemed to have been taken

Filing a divisional application is not considered a response to an objection; all issues in the office action must be addressed. If all issues are not addressed, a notice of default may be issued.

After advertisement

An application may also be divided any time after advertisement but before registration, including during the two-month period following advertisement, any extended opposition period and after the filing of a statement of opposition, so long as the goods and services divided out are within the scope of the original application on the day on which the divisional application is filed.

Merging registrations - Domestic

Under paragraph 41(1)(f) of the Act, if a trademark that is the subject of an application that has been previously divided proceeds to registration, it may be merged with other registrations of the trademark that stem from the same original application and where the trademarks are the same and have the same registered owner.

Deemed date

Extending the statement of goods or services

Extending the statement of goods or services for a word mark or distinguishing guise

When a divisional application that stems from an application to extend the goods or services of a registration for a word mark or a distinguishing guise proceeds to registration and is merged automatically, the Office will also change the "type" of the registered trademark to a standard character, a three-dimensional shape or a mode of packaging goods, as applicable.

For applications in respect of a registered trademark that is a word mark or a distinguishing guise, the divisional application should, at the time of filing, include a statement under paragraph 31(b) of the Act to the effect that the applicant wishes the trademark to be registered in standard characters, or paragraph 31(e) of the Regulations that the trademark consists in whole or in part a three-dimensional shape or mode of packaging goods, as applicable.

Division after advertisement of a word mark or distinguishing guise

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 under paragraph 31(b) of the Act, or under paragraph 31(e) of the Regulations, as applicable.

Pending transfer

Should there be a pending transfer of any of the registrations that stem from the same original application, the request to merge will only be processed once the transfer is registered to ensure that all registrations are in the name of the same registered owner.

Inherent distinctiveness

The Registrar will be able to refuse, under paragraph 37(1)(d) of the Act, trademarks which are not inherently distinctive.

What is inherent distinctiveness?

The assessment

An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the goods and services applied for assuming no use (as defined in section 4 of the Act) has occurred.

Inherent distinctiveness

Applicants will be given the opportunity to furnish the Registrar with evidence that the trademark had acquired distinctiveness at the date of filing of the application.

Applications not advertised

Applications not advertised by June 17, 2019 will require reassessment by an Examiner for inherent distinctiveness under subsection 32(1) of the Act.

Withdrawal of the advertisement of an application

The Registrar will have explicit authority to withdraw the advertisement of an application.

Subsection 37(4) of the act

Subsection 37(4) gives the Registrar the authority to withdraw the advertisement of an application under two conditions:

Examples

Should not have been advertised:

Incorrectly advertised:

Conditions

Correct obvious error in registration

Subsection 41(3) of the Act provides the Registrar with the authority to correct errors in registrations.

Under the current Act, only the Federal Court may correct errors in a registration. The expense of a Federal Court proceeding under section 57 must generally be borne by the registered owner.

Obvious errors

Timing

Notification of third party rights

An informal way for third parties to bring to the attention of the Registrar information bearing on the registrability of a pending trademark application.

Notifications

Communication procedures

Appropriate grounds

A notification of third party rights must only inform the Registrar of the following:

Required information

Timing

While a notification may be filed at any time before a trademark is registered, subsection 37(4) of the Act prescribes the conditions under which the Registrar may withdraw the advertisement of an application.

Monitoring

Renewals

The renewal term has changed from 15 to 10 years and was required by the Singapore Treaty.

Period to renew

Prescribed period and terms
Prescribed period and terms - Text version

The diagram visually represents two scenarios of registration terms and renewals. The first scenario depicts if a trademark is registered after the coming into force (CIF) date. In this scenario, the registration can only be renewed within the prescribed period which starts six months before and ends six months after the expiration of the registration term. In the first scenario, both the initial registration term and the first renewal term depicted are of ten years each.

In the second scenario, the registration of the trademark occurred before the coming into force date (CIF) but will expire after CIF. Because the trademark was registered before CIF, the initial registration term is of 15 years. Since the expiration of the initial registration term falls after CIF, both following renewal terms depicted in the diagram are of ten years. In the second scenario, the registration can be renewed at any time during the initial 15 year registration term. However, during the subsequent 10 year renewal terms, it will only be possible to renew the registration during the prescribed period which starts six months before and ends six months after the expiration date of the renewal term.

Fees and requirements to class

Partial renewals

Notice to group and class

Section 44.1 of the Act and section 63 of the Regulations have been established to facilitate the classification of the goods or services found in existing registrations.

Amendment requirement

Subsection 44.1(1) provides the Registrar with the authority to require, by way of notice, all registered owners to group and class the goods or services of their registered trademark.

Prescribed time

Section 63 of the Regulations states that 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 notice.

Failing to furnish statement

Extensions of time

A person can apply under subsection 47(1) of the Act to extend a time limit only if that time is set by the Act or prescribed by the Regulations.

Section 47 of the act

Under subsection 47(1) a person can apply for an extension of time to:

Subsection 47(2) gives a person the opportunity to request an extension of time after that time has lapsed.

Fees

Force majeure

Relief measures for force majeure events that provide more flexibility to extend certain prescribed deadlines in the Trademarks Act.

Subsection 34(5) of the act

Subsection 34(5) of the Act permits an applicant to apply for an extension of time based on force majeure to file an application in Canada containing a priority claim.

Therefore, an applicant may request an extension of time under section 47 of the Act to file a Canadian application containing a priority claim due to a force majeure event but not to declare (add) a claim to priority to an existing application in Canada.

Subsection 46(5) of the act

Subsection 46(5) of the Act permits a registered owner to apply for an extension of time to renew a registered trademark.

Force majeure

Characteristics

Examples

Requesting extension of time

Granting of request

If the Office grants the extension of time due to Force Majeure, the period may only be extended by a maximum of seven days.

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.

The registration fee of $200 from the current Regulations must still be paid.

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.

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

Thank you!

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