Co-Chairs
- Mr. Mesmin Pierre (CIPO), Canadian Intellectual Property Office (CIPO)
- Mrs. Donna White (IPIC), Institut de la propriété intellectuelle du Canada (IPIC)
1. Opening remarks
The co-chairs welcomed the committee members and thanked them for being present to discuss the items on the agenda.
2. Overview of the latest developments at the Trademarks and Industrial Designs Branch
The co-chair provided an update on the latest practices implemented by TIDB as part of its development.
CIPO introduced the Recovery Plan to improve timeliness in trademark processing. A number of measures were implemented on to address challenges in terms of the Office's framework of practices, working tools, identifying areas where the Office needs to act, making decisions and implementing practices.
CIPO is continuing the recruitment of new examiners. On May 10th, CIPO welcomed 17 new examiners. A new cohort is scheduled for September.
CIPO continues to address technological challenges and solutions will be tested soon.
CIPO continues to implement new measures as part of its improvements. New Practices Notices will be published regularly.
3. Madrid
Registration
The certificate of registration is sent to WIPO together with the Statement of Grant of Protection in electronic form
The registered owner or their appointed agent will also receive a certificate of registration from CIPO by regular mail.
Note: both documents (the one sent electronically to WIPO and the courtesy copy that is sent by mail) are identical and include the same information including dates.
Renewals
The renewal must be requested and the fee paid directly to WIPO when renewing the designation of Canada as part of the renewal of the International Registration. They may do so by using either the e-service or the form available on the WIPO website. Once the renewal is processed by WIPO and recorded in the international register, WIPO will notify CIPO electronically of the renewal of the designation to Canada. CIPO will then automatically record the renewal in the Canadian register/database. No additional action is required before CIPO to complete the renewal and no additional fees are required to be paid to CIPO directly.
There is a fee to renew the designation to Canada:
- 282 CHF for the base renewal fee that includes one class and
- 88 CHF for each additional class to be renewed
Once WIPO notifies CIPO of the renewal of the designation to Canada and the renewal is recorded on the Canadian register of trademark, CIPO will send:
- A notice of renewal to the applicant or the appointed agent if the Protocol application is still pending; or
- A renewal certificate to the registered owner or the appointed agent if the Protocol application is registered
4. Domestic Registration Certificates
The ability to issue an electronic registration certificate (and other file documents) available to the agent or the registered owner is part of the TIDB/TMOB electronic correspondence project that is scheduled to begin later this year.
5. Time to Examination
Time to first action reported is a fiscal year average. This includes Madrid applications which are examined in under 18 months. Currently, the Office is examining domestic files from December 2018 making the current TAT to first action 29 months.
It was suggested that the pick list for submitting goods and services when filing a trademark application be implemented. This will allow for efficiencies in the examination process
IPIC may include this in their e-newsletter to inform members.
6. Expedited Examination
The criteria for Expedited Examination is specific. Other markets offer similar trademarks. If a trademark is at a disadvantage in a market, it may request Expedited Examination if the criteria are met.
The time limit for Expedited Examination is 25 months.
It is recommended that as much information as possible be provided to ensure that the Expedited Examination practice is working properly.
It was encouraged to continue to provide feedback on this practice.
7. Reaching examiners
Examiners currently return a call within 24 hours. In the event that a call is not returned within the aforementioned timeframe, members are invited to contact the Manager in Examination.
CIPO will share an updated list of teams in Examination with IPIC members.
8. Goods and Services Manual
The Goods and Services Manual is lacking terms of a technical nature as well as those in the field of telecommunications. Members also expressed the need for more service-related terms to be added to the Manual. In March, a virtual session was held between CIPO and intellectual property firms across Canada in order to take stock of gaps in the Manual. CIPO is currently expanding the Goods and Services Manual based on these recommendations.
9. New CIPO Communication Practices
The new communication rules with respect to agents and firms of agents will be implemented on the CIF date of the College of Patent Agent and Trademark Agent Act (CPATA for short) and the consequential amendments to the Trademarks Regulations.
All incoming communication intended for the Registrar of Trademarks must comply with section 3 of the Regulations, namely that that communications intended for the Registrar must be addressed to the Registrar of Trademarks and must include the name of the person submitting the correspondence. If the communication is submitted by an agent and all agents of the same firm have been appointed in respect of that business, the name of the firm must also be provided.
Any correspondence submitted anonymously, correspondence submitted in the name of a firm only, or correspondence that otherwise does not meet the requirements as set out in the regulations, will not be considered by the Registrar.
In practice, if the communication does not meet the requirements of section 3, the Office will attempt (where feasible) to communicate with the agent, applicant or registered owner to inform them that the correspondence does not meet the requirements of the Regulations but in practice it would be the equivalent of receiving non-authorized third party correspondence.
The correspondence may be resubmitted, but should it be resubmitted after a prescribed deadline, a request for a retroactive extension of time under subsection 47(2) of the Trademarks Act may be required together with the payment of the prescribed fee.
10. Update on NID
CIPO acknowledged the need to continue to improve and work collaboratively on this topic. Sessions are being organized by IPIC, CIPO and others. The Branch will continue to develop the skills of examiners through continuous development.
11. Conclusion
The next TMPC meeting will be held on . This date has yet to be confirmed. The following items remain to be provided:
- Names and contact information in terms of product and service suggestions;
- To complete and update the Review team sheet;