TRADEMARK MATTERSTM
Fall 2009 Edition
TRADEMARKS OFFICE
Changes to the criteria to qualify as a Registered Trade-mark Agent
CIPO proposes to change the Rules to become a Registered Trade-mark Agent. Indeed, to become a Registered Trade-mark Agent, Canadians will need to successfully write the Trade-marks agent exam and cumulate a 24 month active working experience in the trade-mark field. These changes include lawyers and notaries who can actually be registered as Trade-mark Agents on filing a Statutory Declaration stating that they cumulate a 24 month active working experience in the trade-marks field.
On the other hand, examiners at the Trade-marks office will qualify to write the exam as long as they comply with the required 24 month working experience in trade-marks.
CIPO explains that the purpose of these changes is to ensure that trade-marks agents have sufficient IP knowledge to work as trade-mark agents.
PRACTICE
Necessity of a real intention of use
A decision from the Trade-marks Opposition Board issued on March 2009, reminds the necessity of making real statements while applying for a trade-mark registration. In the case Dollar General Merchandising v. R. Steinberg (T.M.O.B., Herzig, March 11, 2009), application was refused in the course of an opposition proceeding, where it was evidenced that the applicant was not the person who had the real intention to use the mark. Indeed, the company of the applicant's husband was the entity for which the application was filed. The husband did not want to reveal the entity of his company for business reasons.
INTERNATIONAL
The government of the United-States of America and the European Union Community have recently launched an electronic brochure to promote the IP enforcement rights by registering same at the borders. Follow this link to download the brochure.
ARTICLES
Our more recent article is now available on our website : LEGAL CONSIDERATIONS IN EXPORTING : CHOOSING A TRADE-MARK AND PROTECTING THE RIGHTS.
TRADE-MARK PRACTIONNERS
Applications with incomplete registration and use abroad basis [Sect. 16.(2)] to proceed on another valid basis where applicable
The Trade-marks Office propose to amend its practice in order to proceed with the advertisement of the trade-mark if the application based on Sect. 16.(2) is incomplete when other basis are valid and complete. Therefore, the Registrar will proceed with the advertisement of the mark without further notice to the applicant and the Sect. 16.(2) shall be withdrawn.
Applicants are allowed to add a Sect. 16.(2) basis at any time before advertisement of the mark.
Comments may be posted via CIPO's website: www.cipo.gc.ca.
Extensions of time to respond to examiners' reports to be restricted
The Trade-marks Office proposes a change in the granting of extensions of time to respond to examiners' reports, which is actually in the process of consultation.
According to this change, the Registrar will grant only one six month extension of time upon receipt of a request justifying the extension. NO other extension of time will be granted, unless significant substantive reasons are exposed and explanations as to why the response may not be filed within the delay.
Notices of default will still issue and the response will need to be filed within the prescribed delay of such Notice. No extension of time may be requested to respond to the Notice of default. Failure to respond to the Notice of default will result in abandonment of the application.
Comments may be posted via CIPO's website: www.cipo.gc.ca.
New Sect. 45 expungment practice
The new practice is effective since September 14, 2009. The changes concern effective processing of the file by reducing the number of extensions of time. Sect. 45 proceedings are in place to expunge registration of marks that are no longer in use. They are summary and administrative proceedings.
Reformatted and Revised Wares and Wervices Manual
Since October 6, 2009, a new Wares and Wervices Manual is available on CIPO's website. It is designed to ease the searches and simplifies the consideration of acceptable statement of wares and services. Before using the new version, it is highly recommended to read the general comments: www.cipo.gc.ca.
© Isabelle Deshaies
November 2009
Back to articles and publications >>
Suggest to a colleague >>
Articles contained in this section were written for informational and educational purposes and do no replace your trade-mark agent's opinion. Any global or partial reproduction of these articles without the author's specific consent is strictly prohibited.
To be notified of future articles published on this Website, enter your Email address in the field belos and click on "Notify me!".
