Canadian trade-marks prosecution practice has changed over the past several months. Three important changes are as follows.
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 Trade-marks Act.
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 Journal.
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 application.
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 registered mail.
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 extraordinary circumstances.
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 services.
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.
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