From Filing to Registration: the Canadian Trademark Application Process
By Carrie Kerr, November 15th, 2016
Have you decided to register your trademark in Canada?
The application process at the Canadian Intellectual Property Office (“CIPO”) may seem somewhat complex, especially if it is your first time registering a trademark. It isn’t as simple as submitting an application, paying a fee and POOF! - as if by magic - you have a trademark registration. There are various requirements, stages, communications from CIPO and fees involved.
As an introduction to the process, here is what you can expect as your application moves its way through CIPO from the application stage to registration:
Filing
After your application is filed at CIPO it will be assigned a filing date and application number, provided that the application is complete. CIPO will also add your application to the Canadian Trademarks Database and issue you a formal filing acknowledgement and a proof sheet that summarizes the information in your application.
Examination
A trademark Examiner will then review your application. The application is reviewed for various formality requirements, including whether the description of goods and services are sufficiently specific.
The Examiner will also conduct a search of the Trademark Register to determine whether there are any prior applications or registrations that are confusing with your mark.
Lastly, the Examiner will determine whether your trademark is registrable in accordance with the Trade-marks Act. There are certain types of trademarks that are prohibited or are not registrable, including marks that are clearly descriptive or deceptively misdescriptive, are primarily merely the name of a person living or deceased within the past thirty years or are scandalous, obscene or immoral.
If there are any doubts about your application, the Examiner will issue an Examiner’s Report. You will have a chance to respond to the Examiner, and if the objections raised in the report are not overcome, the application will be rejected.
Advertisement
If the Examiner's objections are overcome, the trademark will be approved for advertisement in the Trade-Marks Journal, a weekly publication by CIPO which lists trademark applications being sought for registration.
The purpose of having your application published in the Trade-Marks Journal is to allow for members of the public to have an opportunity to oppose your proposed trademark.
This “opposition period” lasts for two months from the date of advertisement.
Opposition
If your application is opposed by a third party, we suggest contacting a registered trademark agent, who will be able to assist you in this complex process.
Allowance
If your application is not opposed, CIPO will issue a Notice of Allowance, inviting you to pay the Registration Fee.
If your application was filed based on “proposed use” in Canada, before the mark can register, you will need to submit a Declaration of Use, attesting to the fact that you have used your mark in Canada in association with the goods and services in the application. If you have not yet used your trademark in Canada by the time the Notice of Allowance issues, there are extensions of time available to pay the Registration Fee and submit the Declaration of Use which will give you additional time to begin using your trademark.
If your application was filed based on use or making known in Canada, you will only have to pay the registration fee.
Once the Registration Fee and Declaration of Use (if applicable) have been submitted and accepted by CIPO, your trademark application will register. CIPO will then issue an official Certificate of Registration.
If you have any questions about the Canadian trademark application process or would like further information please do not hesitate to contact us. We are always happy to help.
For more information please contact:
T: 613.801.1092
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In the Province of Québec Foreign-Language Outdoor Signage to Have "Sufficient Presence" of French
By Scott Miller, November 22nd, 2016
The Government of Québec has now published the final version of the new Regulation respecting the language of commerce and business. Effective November 24, 2016, all new foreign-language outdoor signage must be accompanied by a “sufficient presence” of French, even when that outdoor signage contains a foreign-language trademark, which were previously exempt from the Québec language laws.
The new French component must be added alongside and in the same visual field as the foreign-language trademark and can take three different forms:
- a generic term or a description of the products or services concerned;
- a slogan; or
- any other term or indication, favouring the display of information pertaining to the products or services to the benefit of consumers or persons frequenting the site.
The requirement only relates to outdoor signage, and not indoor signage, movable products (e.g. automobiles), websites, etc. Businesses have a three-year grace period, to November 24, 2019, to bring existing signs into conformity with the regulations. A French guide entitled Affichage des marques de commerce published by the Office québecoise de la langue française provides examples and can be found here:
For more information please contact:
Scott Miller, Partner, Head of the Litigation Department
T: 613.801.1099
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How does CETA affect IP rights in Canada?
By Randy Marusyk and Lauren Blaiwais, January 10th, 2017
Canada and the European Union (EU) officially signed the Comprehensive Economic and Trade Agreement (CETA) on October 30, 2016. The following day, Parliament introduced the first reading of Bill C-30, An Act to implement the Comprehensive Economic and Trade Agreement between Canada and the European Union and its Member States and to provide for certain other measures. CETA’s principal goal is to reduce the barriers of Canada-EU trade; it addresses tariffs, product standards, professional certification, government procurement and investments.
In order to implement CETA, Canada is required to make changes to several federal acts, including the Patent Act and Trade-marks Act.
Trademarks
Bill C-30 modifies the definition of geographical indications (GIs) in the Trade-marks Act. It enables GI protection for not only wine and spirits, but also agricultural and food products, such as certain cheeses, oils and meats (e.g. feta). The Registrar will be responsible for supervising a list of protected GIs, and will restrict use of certain European GIs to products originating from the European regions that the GIs are typically associated with. Consequently, Bill C-30 allows for a GI opposition procedure for those interested in objecting to the protection of particular geographical indications. Any person interested may file a statement of objection within two months after the Minister makes a statement in respect of a GI published on the CIPO website and the Registrar enters same on the list.
Furthermore, there will be import/export restrictions for geographical indications: wines, spirits agricultural and food products will be banned if they bear the GI and either 1) do not originate in the territory indicated, or 2) do not conform to the laws of the territory indicated. Bill C-30 offers owners of protected GIs the option to file a Request for Assistance with the Canadian Border Services Agency to help prevent the import of counterfeit goods through the Intellectual Property Rights Program.
Patents
CETA will affect the term of pharmaceutical patent protection, as well as patent procedural rights. Pharmaceutical companies often face delays with patents in getting regulatory approval, which lead to lost patent protection due to the protracted development and approval process. The Patent Act does not currently moderate the lost patent protection due to delays; however Bill C-30 will offer a certificate of supplementary protection. This certificate provides patent term restoration for a maximum of two years.
In addition, CETA will provide an innovator right of appeal under the Patented Medicines (Notice of Compliance) Regulations (NOC Regulations). The NOC Regulations link patent protection and regulatory approval for pharmaceutical products. Linkage proceedings provide innovators with an avenue to prevent generic drug manufacturers from obtaining regulatory approval if same would result in patent infringement. Since CETA requires the effective right of appeal to linkage proceedings, the NOC Regulations will require modification, which will be enabled by Bill C-30’s amendments broadening the governor in council’s regulation-making powers.
An overhaul to the NOC Regulations proceedings would be possible with the expansion of regulation-making powers, which would have a significant impact on pharmaceutical patent litigation. For example, duplicate litigation, which stems from summary, non-binding determinations under the current NOC Regulations might see its last days if the NOC Regulations permit full actions and final determinations. This means that innovators will be able to access full appeals like those in regular patent actions.
For more information please contact:
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Lauren Blaiwais, Articling Student
T: 613.801.1057
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A Lesson in Costs: Know your Patent Claims before Asserting Infringement
By Scott Miller and Deborah Meltzer, January 24th, 2017
MediaTube Corp v Bell Canada, 2017 FC 16 appears to provide a promising Canadian judgement that clarifies the assessment of the validity and infringement of an information technology patent with respect to the telecommunications industry. Unfortunately, the underlying thrust of the litigation quickly departed from claims of validity and infringement to a dispute over costs. The primary issue was that initially the plaintiffs’ did not have a clear claim of infringement, for which they were justifiably penalized with significant costs. In addition, it was concluded that despite their “477 patent” being valid, there was no infringement, and thus no costs were awarded against Bell.
Whether or not this case marks a victory for IT companies warding off so-called “patent-trolls”, is questionable. Canadian jurisprudence is calling for a foundational IT patent case; however, given the weaknesses in the plaintiffs’ infringement allegations, this judgement falls short of the mark of providing any real direction to patent owners with specific arguable claims. At best, it serves as a stepping stone to future patent infringement actions that will effectively guide both patentees as well as mega IT corporations.
For more information please contact:
Scott Miller, Partner, Head of the Litigation Department
T: 613.801.1099
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Deborah Meltzer
T: 613.801.1077
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