The Canadian Intellectual Property Office (CIPO) has proposed
amendments to the Trade-marks Regulations (Regulations)
that would introduce significant procedural changes to trademark
law in Canada, including the following:
1. Non-traditional marks - The proposed
amendments include specific provision for the registration of
non-traditional trademarks including holograms, motion marks, marks
applied in a particular position on a three-dimensional object, and
sound marks. Note: CIPO recently issued a Practice Notice stating
that applications for the registration of trademarks consisting of
sounds will be accepted effective immediately, pursuant to a recent
order of the Federal Court. See "
CIPO Comes Roaring into the Present: Sound Marks are Now
2. Amendment of applications - CIPO's
current restrictive practice would be considerably relaxed to allow
for: (a) the pre-advertisement amendment to an earlier date of
first use, without the requirement of filing evidence; (b) the
pre-advertisement amendment to allege use or making known in Canada
before the application's filing date; and (c) the
post-advertisement amendment to claim use as long as the claimed
date of first use does not predate the filing of the application.
However, the proposed amendments would make the post-advertisement
correction of the applicant's identity more difficult.
3. Opposition Practice - The proposed
amendments would provide that both parties must complete any
cross-examinations within four months after the filing of the
opponent's reply evidence. This would end the ability to delay
the filing of evidence until after cross-examination of the other
party's affiants. Also, the amendments provide for the
sequential filing of the opponent's and then the
applicant's written submissions. The current practice is for
both parties to file written submissions simultaneously.
4. Transfers - Currently, CIPO requires
evidence of assignments and other transfers before it will record
same. The proposed amendments would do away with this requirement,
and a transfer would be recorded simply on the basis of a request
CIPO recently concluded its consultation with stakeholders
regarding these and a number of other proposed amendments to the
Regulations – it will likely take at least a year for any
amendments to be implemented.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).