Significant amendments proposed to Canada's Trademarks Regulations
March 12, 2012

The Trademarks Office has proposed significant amendments to the Trademarks Regulations ("Regulations") as shown in the following link:
http://www.smart-biggar.ca/files/CIPO_Amendments.pdf.

Typically, regulations are procedural rules intended to implement a law, which in this case is the Trademarks Act. Regulations do not often substantively affect the law. However, in this case, the proposed amendments to the Regulations will have a substantive impact beyond purely procedural changes.

Some of the more significant changes are summarized below.

  • Non-traditional marks. Historically, the Trademarks Office has refused applications to register sound marks. The proposed amendments explicitly allow for the filing of applications to register sound marks as well as holograms and motion marks. This is a significant change.

  • Amendments to applications. While the current Regulations allow for an application to be amended to claim a later date of first use without the need to file evidence, evidence is required to claim an earlier date of first use. The amendments will simplify the process as it will not be necessary to file evidence in either case.

    Under the current Regulations, it is possible to amend an application based on prior use in Canada to be based on proposed use. However, unlike in the United States, the reverse is not possible as it is not possible to amend an application based on proposed use to be based on prior use. The proposed amendments to the Regulations would allow both types of amendments.

  • Assignments. Currently, to record an assignment, the Trademarks Office requires documentary support such as a photocopy of the executed assignment document. The proposed amendments eliminate the need for filing any documents as nothing other than a request to transfer the mark(s) will need to be filed.

  • Cross-examination in oppositions. Currently, after one party has been served with evidence in an opposition, that party can cross-examine upon the evidence and obtain an extension of time to file its own evidence. Under the proposed amendments, a party can no longer insist that cross-examinations be completed before it is required to file its own evidence. Under the proposed amendments, both parties will have the same deadline to complete all cross-examinations. This is generally consistent with the practice in litigation proceedings as a party's evidence must be filed before it can cross-examine upon the other party's evidence.

  • Written arguments in oppositions. Currently, in oppositions, both parties must file their written arguments at the same time without the benefit of being able to read the other party's written arguments. Under the proposed amendments, the opponent will have two months to file its written argument. The applicant will then have two months to respond.

  • Electronic filing and electronic service in oppositions. A number of years ago, the Regulations were amended to allow for the electronic filing of some documents, with many exceptions. Under the proposed amendments, most of the exceptions will be removed.

    Currently, to encourage electronic filing, the Trademarks Office offers a discount for filing trademark applications electronically. The proposed amendments will extend the discounts to cases where the following documents are filed electronically: Statements of Opposition, section 45 (summary expungement) requests, and registration fees.

    In oppositions, it will now be explicitly permitted to serve any and all documents on the other party by email.

There are many proposed amendments beyond those summarized above. This summary merely highlights some of the proposed amendments that we believe are likely to be the most significant.

The Trademarks Office is soliciting comments on the proposals from the Canadian trademark profession. Once the Trademarks Office has considered those comments and finalized the wording of the proposed amendments, a number of regulatory hurdles will have to be completed before any amendments are implemented. Accordingly, if the amendments are implemented, the implementation will not likely be within the next year.

We will continue to provide timely updates.

Philip Lapin, Ottawa

 

The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly

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