Canadian trade-marks prosecution practice has changed over
the past several months. Three important changes are as
1. Disclaimer Requests
Descriptive trade-marks are not registrable in Canada. The
policy behind the law is that it's unfair for a
registrant to monopolize a clearly descriptive term:
competitors should be able to use the same term to describe
their products and services.
Sometimes only a portion of a trade-mark is descriptive. If
so, and the mark as a whole is not descriptive (and if it
complies with all other legal requirements), then the mark will
be registrable. In those cases, the Canadian Intellectual
Property Office (CIPO) has typically required applicants to
"disclaim" the descriptive portions of the marks. The
authority to do so is specifically granted in the Canadian
In a curious move, the CIPO recently announced that it will
no longer be exercising that authority. The underlying
rationale is unclear, but at least one reason for the new
policy is that fewer disclaimer requests will mean faster
processing times for trade-mark applications. That might be
true, but fewer disclaimer requests could result in protracted
disputes between registrants who have not disclaimed
non-registrable portions of their trade-marks and third parties
who use such portions in their trade-marks.
In any case, CIPO examiners who issued office actions before
the new policy came into effect have been willing to withdraw
their objections upon request by applicants. Examiners have
also been willing to accept retroactive withdrawals of
disclaimers that were given before the policy change; however,
it is critical that a retroactive request be made before an
application is published in the Trade-marks
On a going-forward basis, if the CIPO examines a mark that
is completely descriptive or is otherwise unregistrable, it
will object to the mark in its entirety. If the mark as whole
is deemed registrable (despite the inclusion of non-registrable
portions), then CIPO will not object and will not require a
disclaimer of the non-registrable portions. The CIPO will also
continue to require disclaimers of the eleven-point maple leaf
design, whenever that design appears in a trade-mark
2. New trade-mark opposition procedures
Trade-mark prosecution can be a lengthy process. The first
step is to draft and file the trade-mark application. Several
months later, a CIPO examiner will review the application,
conduct searches, and decide whether the mark is registrable.
If the examiner approves the application, the mark will get
published in the Trade-marks Journal, at which point
anybody can oppose the application.
The opposition process is also lengthy and involves several
steps including evidence, cross-examinations, written
arguments, and oral hearings. Recently there have been some
changes to this process. For example, opposition materials can
now be served on the parties to an opposition by courier or in
any other manner with the parties' consent. Previously
the parties could only serve materials by personal service or
More importantly, however, many of the deadlines within the
opposition process have been extended. For instance, the time
limit for an applicant to file a counter-statement has
increased from one to two months, and the time limit for filing
and serving evidence has increased from one to four months.
Some of the deadlines are now non-extendable, except in
3. Public authorities have onus of proof
Canadian trade-mark law offers special protection for
"official marks" which are similar to regular trade
marks, except there is no substantive examination process for
them, there is no opportunity for third parties to oppose them,
and the protection for them covers all products and
Official marks may only be registered by public authorities
in Canada. To qualify as a "public authority", the
applicant must be under a significant degree of government
control and must provide a benefit to the public.
The CIPO has now issued a practice notice requiring official
mark applicants to submit evidence of their "public
authority" status. This typically involves submitting
incorporation documents, agreements between the applicant and
government agencies, and materials demonstrating how the
applicant's activities benefit the public. In the past,
no such evidence was required.
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.
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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.
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