canada’s trademark regime: a review since cif...purpose of grouping the goods or services of a...
TRANSCRIPT
Canadarsquos Trademark Regime A Review since CIF
Building a prosperous and innovative Canada
Trademarks andIndustrial Designs Branch
Canadian Intellectual Property Office
Fairmont Chateau Laurier Ottawa Ontario (Source Brand Canada)
Presentation Overview bull Renewal of registrations amp
Nice Classificationbull Extension of timebull Temporary appointment of
agentbull Filing a divisional applicationbull Inherent distinctivenessbull Madrid Protocol WIPO
Irregularities amp Best Practicesbull Questions
2
Renewal of Registrations
3
Renewal process for registrations for which the goods or services have not been grouped according to the classes of the Nice Classificationsystem
4
The Recommended Steps to Renewal
5
Basic Renewal Fee
Where goods or services of a registration have not been grouped and classed the registered owner can renew by initially paying the basic renewal fee for the first class
bull $400 if paid using CIPO e-servicebull $500 otherwise
6
441(1) Notice
Once the renewal has been processed the Registrar will send a notice under subsection 441(1) of the Act requiring the registered owner to group the goods or services according to the classes of the Nice Classification
7
Under section 63 of the Regulations the registered owner must provide the Registrar with the statement of goods or services grouped and classed according to the Nice Classification within 6 months after the date of the 441(1) notice
8
6 Months to Provide Statement
When the statement required by the notice is provided the Nice Classification information will be assessed by an examiner
Note that it is not possible to provide Nice Classification information in one request in respect of more than one registration (contrary to section 4 of the Regulations)
9
Statement Reviewed
If the examiner determines that the Nice classification information is notacceptable a report will issue which
bull provides guidance as to the appropriate class for a given good or service and
bull Specifies the amount of any additional required fees
10
Unacceptable Statement
If the registered owner does not respond to this report the Registrar has the authority to make the final determination as to the proper Nice Classification information under subsection 441(4) of the Act
11
Unacceptable Statement
If the examiner determines that the Nice Classification information is acceptable a report will issue confirming the final classification of the goods or services together with a client proof sheet
12
Acceptable Classification
bull If any additional fees are required an adjusted renewal fee notice will be issued
bull These fees must be paid within two months of this notice
bull Failure to pay these fees will result in the expungement of the registration
13
Acceptable Classification
14
Pay Adjusted Renewal Fees Online
15
Pay Adjusted Renewal Fees Online
16
Pay Adjusted Renewal Fees Online
17
Pay Adjusted Renewal Fees Online
If following the issuance of a notice under subsection 441(1) of the Act the registered owner does not respond to the notice by providing the classes for the goods or services the Registrar will send a further notice under subsection 441(3) giving the registered owner 2 months to comply
18
Failure to Furnish
If following the issuance of a notice under subsection 441(3) of the Act the registered owner does not respond by providing the classes for the goods or services the registration may be expunged or not renewed
19
Failure to Furnish
While specificity of goods or services will aid in their classification the Registrar does not have the authority to require that any of the goods or services in the registration be amended to comply with specificity requirements in examination since these provisions are relevant to applications and not registrations
20
Authority to Request Amendment of Statements
21
Renewal Process(Goods or services not classed at renewal)
22
The Inadvisable Stepsto Renewal
bull The registration is renewed and the base fee for one class is paid using the online renewal service and
bull on the same day the goods or services are grouped according to the Nice Classification using the online service and
bull on the same day the fees for the additional Nice classes (as calculated by the registered owner) are submitted by paper
23
Scenario 1
bull The registration is renewed and the base fee for one class is paid using the online renewal service and
bull on the same day the fees for additional Nice classes (as calculated by the registered owner) are submitted by paper however
bull the goods or services have not been grouped and classed
24
Scenario 2
A request to renew is filed by paper together with $400 (renewal fee under the previous Act) and $125 for an additional class (as calculated by the registered owner)
25
Scenario 3
Additional Renewal FeesThe Office is looking to add the ability to pay additional Nice class fees online at the same time as submitting the Nice Classification information
This should speed the process as the registered owner would not have to wait for an adjusted renewal fee notice to pay any outstanding fees
Note that the amount would not be calculated automatically as the final number of classes would not be finalized
26
Renewal process for registrations for which the goods or services have been grouped according to the classes of the Nice Classification system
27
Renewal Fees
Where goods or services of a registration are grouped and classed the registered owner must pay all of the fees set out in Items 14(a) or (b) of the Schedule to the Regulations
The fee is based on the number of classes in the registration at the time of renewal
28
Partial Renewal
29
Partial Renewal
The registration of a trademark may be renewed for some or all of the goods or services in respect of which the trademark is registered
If a registered owner requests the renewal of only some of the goods or services listed in the register for a registration (partial renewal) the registration will be renewed only for those goods and services listed in the renewal request
30
Partial Renewal - Online
A partial renewal can be submitted online only if the
bull Goods or services in respect of which the trademark is registered are grouped according to the classes of the Nice Classification
bull All the goods or services grouped in a class are being renewed and
bull the remaining goods or services are being deleted
31
Partial Renewal ndash Paper
If a partial renewal is not submitted online the Registrar will send a letter acknowledging receipt of the renewal fee
The particulars of the partial renewal will be available and the Registrar will issue a certificate of renewal only after the registration or previous renewal period has expired or the remaining goods or services not being renewed are deleted
32
Partial Renewal ndash Paper
Given the potential delay between submitting a partial renewal and receiving a certificate of renewal registered owners are strongly encouraged to either renew near the expiry of the registration or renewal period or delete the goods or services not being renewed at the time of the partial renewal
33
Partial Renewal
Note that renewing a registration and subsequently deleting some goods or services is not considered a partial renewal as the prescribed renewal fee is based on the number of classes in the registration at the time of renewal
34
35
Extensions of Time
Extensions of time
36
The Branch has been looking for ways to render the end-to-end examination process more efficient and timely
One of the ways to reduce pendency in examination is to amend the practice with respect to the granting extensions of time
Extensions of time
37
Automatic or unwarranted extensions of time slow down the registration process considerably
To put things in perspective in 2018 the Office granted more than 11000 requests for extension of time at the examination stage alone
Extensions of time
38
The practice notice on extensions of time was amended on January 17 to remove the first six-month extension following an examinerrsquos report that was available for practically any reason
Extensions of time
39
Going forward the Office will generally not grant an extension of time to file a response to an examinerrsquos report unless the applicant can demonstrate exceptional circumstances justifying why it is not yet possible to file a proper response
Extensions of time
40
In an effort to implement a smooth transition from the previous practice the practice of not granting an extension of time to reply to an examinerrsquos report unless exceptional circumstances exist will only apply to trademark applications for which an examinerrsquos report has been issued on or after the publication date of this amended practice notice
Extensions of time
41
As a result for applications for which an examinerrsquos report has issued prior to the publication date of January 17 the Office will generally grant the applicant one (1) extension of time of up to a maximum of six (6) months to file a response to an examiners report if the request is justified
Extensions of time
42
The following are examples of what could amount to an exceptional circumstance that would justify an extension of time
Extensions of time No change
43
1 Recent change in trademark agentThere has been a very recent change in the appointed trademark agent and the agent requires time to become familiar with the file
No change
Extensions of time
44
2 Circumstances beyond the control of the person concernedExamples include illness accident death bankruptcy or other serious and unforeseen circumstances
No change
Extensions of time
45
3 TransferThere is a request pending at the Office to record or register the transfer of an application or registered trademark and said transfer would overcome a confusion objection
No change
Extensions of time
46
4 OppositionA co-pending and confusing trademark is the subject of a pending opposition proceeding
Amended
Extensions of time
47
5 Section 45A registered trademark cited as confusing is subject to a pending section 45 proceeding
Amended
Extensions of time
48
6 Official markThe applicant is in the process of actively negotiating a consent from the holder of an official mark
Amended
Extensions of time
49
7 Division of a Protocol applicationThe applicant has filed a request for the division in respect of Canada of the international registration on which the original Protocol application is based and is waiting on the International Bureau for notification that a divisional international registration has been created
No change
Extensions of time
50
8 Respond to an objection which could lead to a refusal under paragraphs 37(1)(b) (c) or (d) of the ActThe applicant requires more time to consider the objection and file a proper response The applicant may request an extension of time for this reason only once in the prosecution of the application
New
Extensions of time
51
9 Compile evidence of distinctiveness under subsection 32(1) of the ActThe applicant is in the process of compiling the sufficient evidence required to show that the trademark was distinctive at the filing date of the application The applicant may request an extension of time for this reason only once in the prosecution of the application New
Fee for Extensions of time
52
The $125 fee to request an extension of time is only required where a person applies to extend the deadline or period of time that is fixed by the Act or prescribed by the Regulations
Fee for Extensions of time
53
Therefore the fee is not required to request an extension of time to respond to an examinerrsquos report as the period of time to respond is not fixed in either the Act or its Regulations
Fee for Extensions of time
54
The fee is required to request an extension of time where the applicant is considered to be in default of the prosecution of the application as the period of time to respond to a default isfixed in section 34 of the Regulations
55
Appointment of a Trademark Agent or an Associate Trademark Agent
The temporary appointment of an agent or associate agent for the purpose of grouping the goods or services of a trademark registration according to the Nice Classification may be done using the Group Goods or Services (Nice Classification) e-service on CIPOrsquos website by including the details of temporary appointment and subsequent revocation in the ldquoClosing detailsrdquo section
56
Temporary Appointment
The undersigned has been appointed under subsection 22(1) of the Trademarks Regulations by the applicant or registered owner as trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as trademark agent is revoked under section 23 of the Trademarks Regulations
57
Temporary Appointment
The undersigned has been appointed under subsection 22(3) of the Trademarks Regulations by the trademark agent that resides in Canada appointed on the following trademark applications and registrations as associate trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as associate agent is revoked under section 23 of the Trademarks Regulations and the appointed trademark agent will remain of record
58
Temporary Appointment
Suggested wording for a temporary appointment and subsequent revocation can also be found in the relevant Practice Notice on the CIPO website
59
Temporary Appointment
60
Appointment of Agent on Transfers
The Office has been receiving requests for transfers under section 48 of the Actin which it is unclear on behalf of whom the request is initiated (ie the transferee or the transferor)
61
Appointment of Agent on Transfers
In view of the requirements in the Regulations on representation and the appointment of trademark agents all requests for transfers under section 48 of the Act must clearly indicate whether the transferee is appointing the agent who submitted the request
62
Appointment of Agent on Transfers
In view of the evidentiary requirements to record or register a transfer on the request of a transferee all requests must indicate which party is requesting the transfer
63
Appointment of Agent on Transfers
Similarly because it is unclear on behalf of whom the request is initiated it is often unclear whether the transferee is appointing an agent to represent them in respect of that trademark application or registration
64
Appointment of Agent on Transfers
Without a new appointment of agent if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
Presentation Overview bull Renewal of registrations amp
Nice Classificationbull Extension of timebull Temporary appointment of
agentbull Filing a divisional applicationbull Inherent distinctivenessbull Madrid Protocol WIPO
Irregularities amp Best Practicesbull Questions
2
Renewal of Registrations
3
Renewal process for registrations for which the goods or services have not been grouped according to the classes of the Nice Classificationsystem
4
The Recommended Steps to Renewal
5
Basic Renewal Fee
Where goods or services of a registration have not been grouped and classed the registered owner can renew by initially paying the basic renewal fee for the first class
bull $400 if paid using CIPO e-servicebull $500 otherwise
6
441(1) Notice
Once the renewal has been processed the Registrar will send a notice under subsection 441(1) of the Act requiring the registered owner to group the goods or services according to the classes of the Nice Classification
7
Under section 63 of the Regulations the registered owner must provide the Registrar with the statement of goods or services grouped and classed according to the Nice Classification within 6 months after the date of the 441(1) notice
8
6 Months to Provide Statement
When the statement required by the notice is provided the Nice Classification information will be assessed by an examiner
Note that it is not possible to provide Nice Classification information in one request in respect of more than one registration (contrary to section 4 of the Regulations)
9
Statement Reviewed
If the examiner determines that the Nice classification information is notacceptable a report will issue which
bull provides guidance as to the appropriate class for a given good or service and
bull Specifies the amount of any additional required fees
10
Unacceptable Statement
If the registered owner does not respond to this report the Registrar has the authority to make the final determination as to the proper Nice Classification information under subsection 441(4) of the Act
11
Unacceptable Statement
If the examiner determines that the Nice Classification information is acceptable a report will issue confirming the final classification of the goods or services together with a client proof sheet
12
Acceptable Classification
bull If any additional fees are required an adjusted renewal fee notice will be issued
bull These fees must be paid within two months of this notice
bull Failure to pay these fees will result in the expungement of the registration
13
Acceptable Classification
14
Pay Adjusted Renewal Fees Online
15
Pay Adjusted Renewal Fees Online
16
Pay Adjusted Renewal Fees Online
17
Pay Adjusted Renewal Fees Online
If following the issuance of a notice under subsection 441(1) of the Act the registered owner does not respond to the notice by providing the classes for the goods or services the Registrar will send a further notice under subsection 441(3) giving the registered owner 2 months to comply
18
Failure to Furnish
If following the issuance of a notice under subsection 441(3) of the Act the registered owner does not respond by providing the classes for the goods or services the registration may be expunged or not renewed
19
Failure to Furnish
While specificity of goods or services will aid in their classification the Registrar does not have the authority to require that any of the goods or services in the registration be amended to comply with specificity requirements in examination since these provisions are relevant to applications and not registrations
20
Authority to Request Amendment of Statements
21
Renewal Process(Goods or services not classed at renewal)
22
The Inadvisable Stepsto Renewal
bull The registration is renewed and the base fee for one class is paid using the online renewal service and
bull on the same day the goods or services are grouped according to the Nice Classification using the online service and
bull on the same day the fees for the additional Nice classes (as calculated by the registered owner) are submitted by paper
23
Scenario 1
bull The registration is renewed and the base fee for one class is paid using the online renewal service and
bull on the same day the fees for additional Nice classes (as calculated by the registered owner) are submitted by paper however
bull the goods or services have not been grouped and classed
24
Scenario 2
A request to renew is filed by paper together with $400 (renewal fee under the previous Act) and $125 for an additional class (as calculated by the registered owner)
25
Scenario 3
Additional Renewal FeesThe Office is looking to add the ability to pay additional Nice class fees online at the same time as submitting the Nice Classification information
This should speed the process as the registered owner would not have to wait for an adjusted renewal fee notice to pay any outstanding fees
Note that the amount would not be calculated automatically as the final number of classes would not be finalized
26
Renewal process for registrations for which the goods or services have been grouped according to the classes of the Nice Classification system
27
Renewal Fees
Where goods or services of a registration are grouped and classed the registered owner must pay all of the fees set out in Items 14(a) or (b) of the Schedule to the Regulations
The fee is based on the number of classes in the registration at the time of renewal
28
Partial Renewal
29
Partial Renewal
The registration of a trademark may be renewed for some or all of the goods or services in respect of which the trademark is registered
If a registered owner requests the renewal of only some of the goods or services listed in the register for a registration (partial renewal) the registration will be renewed only for those goods and services listed in the renewal request
30
Partial Renewal - Online
A partial renewal can be submitted online only if the
bull Goods or services in respect of which the trademark is registered are grouped according to the classes of the Nice Classification
bull All the goods or services grouped in a class are being renewed and
bull the remaining goods or services are being deleted
31
Partial Renewal ndash Paper
If a partial renewal is not submitted online the Registrar will send a letter acknowledging receipt of the renewal fee
The particulars of the partial renewal will be available and the Registrar will issue a certificate of renewal only after the registration or previous renewal period has expired or the remaining goods or services not being renewed are deleted
32
Partial Renewal ndash Paper
Given the potential delay between submitting a partial renewal and receiving a certificate of renewal registered owners are strongly encouraged to either renew near the expiry of the registration or renewal period or delete the goods or services not being renewed at the time of the partial renewal
33
Partial Renewal
Note that renewing a registration and subsequently deleting some goods or services is not considered a partial renewal as the prescribed renewal fee is based on the number of classes in the registration at the time of renewal
34
35
Extensions of Time
Extensions of time
36
The Branch has been looking for ways to render the end-to-end examination process more efficient and timely
One of the ways to reduce pendency in examination is to amend the practice with respect to the granting extensions of time
Extensions of time
37
Automatic or unwarranted extensions of time slow down the registration process considerably
To put things in perspective in 2018 the Office granted more than 11000 requests for extension of time at the examination stage alone
Extensions of time
38
The practice notice on extensions of time was amended on January 17 to remove the first six-month extension following an examinerrsquos report that was available for practically any reason
Extensions of time
39
Going forward the Office will generally not grant an extension of time to file a response to an examinerrsquos report unless the applicant can demonstrate exceptional circumstances justifying why it is not yet possible to file a proper response
Extensions of time
40
In an effort to implement a smooth transition from the previous practice the practice of not granting an extension of time to reply to an examinerrsquos report unless exceptional circumstances exist will only apply to trademark applications for which an examinerrsquos report has been issued on or after the publication date of this amended practice notice
Extensions of time
41
As a result for applications for which an examinerrsquos report has issued prior to the publication date of January 17 the Office will generally grant the applicant one (1) extension of time of up to a maximum of six (6) months to file a response to an examiners report if the request is justified
Extensions of time
42
The following are examples of what could amount to an exceptional circumstance that would justify an extension of time
Extensions of time No change
43
1 Recent change in trademark agentThere has been a very recent change in the appointed trademark agent and the agent requires time to become familiar with the file
No change
Extensions of time
44
2 Circumstances beyond the control of the person concernedExamples include illness accident death bankruptcy or other serious and unforeseen circumstances
No change
Extensions of time
45
3 TransferThere is a request pending at the Office to record or register the transfer of an application or registered trademark and said transfer would overcome a confusion objection
No change
Extensions of time
46
4 OppositionA co-pending and confusing trademark is the subject of a pending opposition proceeding
Amended
Extensions of time
47
5 Section 45A registered trademark cited as confusing is subject to a pending section 45 proceeding
Amended
Extensions of time
48
6 Official markThe applicant is in the process of actively negotiating a consent from the holder of an official mark
Amended
Extensions of time
49
7 Division of a Protocol applicationThe applicant has filed a request for the division in respect of Canada of the international registration on which the original Protocol application is based and is waiting on the International Bureau for notification that a divisional international registration has been created
No change
Extensions of time
50
8 Respond to an objection which could lead to a refusal under paragraphs 37(1)(b) (c) or (d) of the ActThe applicant requires more time to consider the objection and file a proper response The applicant may request an extension of time for this reason only once in the prosecution of the application
New
Extensions of time
51
9 Compile evidence of distinctiveness under subsection 32(1) of the ActThe applicant is in the process of compiling the sufficient evidence required to show that the trademark was distinctive at the filing date of the application The applicant may request an extension of time for this reason only once in the prosecution of the application New
Fee for Extensions of time
52
The $125 fee to request an extension of time is only required where a person applies to extend the deadline or period of time that is fixed by the Act or prescribed by the Regulations
Fee for Extensions of time
53
Therefore the fee is not required to request an extension of time to respond to an examinerrsquos report as the period of time to respond is not fixed in either the Act or its Regulations
Fee for Extensions of time
54
The fee is required to request an extension of time where the applicant is considered to be in default of the prosecution of the application as the period of time to respond to a default isfixed in section 34 of the Regulations
55
Appointment of a Trademark Agent or an Associate Trademark Agent
The temporary appointment of an agent or associate agent for the purpose of grouping the goods or services of a trademark registration according to the Nice Classification may be done using the Group Goods or Services (Nice Classification) e-service on CIPOrsquos website by including the details of temporary appointment and subsequent revocation in the ldquoClosing detailsrdquo section
56
Temporary Appointment
The undersigned has been appointed under subsection 22(1) of the Trademarks Regulations by the applicant or registered owner as trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as trademark agent is revoked under section 23 of the Trademarks Regulations
57
Temporary Appointment
The undersigned has been appointed under subsection 22(3) of the Trademarks Regulations by the trademark agent that resides in Canada appointed on the following trademark applications and registrations as associate trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as associate agent is revoked under section 23 of the Trademarks Regulations and the appointed trademark agent will remain of record
58
Temporary Appointment
Suggested wording for a temporary appointment and subsequent revocation can also be found in the relevant Practice Notice on the CIPO website
59
Temporary Appointment
60
Appointment of Agent on Transfers
The Office has been receiving requests for transfers under section 48 of the Actin which it is unclear on behalf of whom the request is initiated (ie the transferee or the transferor)
61
Appointment of Agent on Transfers
In view of the requirements in the Regulations on representation and the appointment of trademark agents all requests for transfers under section 48 of the Act must clearly indicate whether the transferee is appointing the agent who submitted the request
62
Appointment of Agent on Transfers
In view of the evidentiary requirements to record or register a transfer on the request of a transferee all requests must indicate which party is requesting the transfer
63
Appointment of Agent on Transfers
Similarly because it is unclear on behalf of whom the request is initiated it is often unclear whether the transferee is appointing an agent to represent them in respect of that trademark application or registration
64
Appointment of Agent on Transfers
Without a new appointment of agent if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
Renewal of Registrations
3
Renewal process for registrations for which the goods or services have not been grouped according to the classes of the Nice Classificationsystem
4
The Recommended Steps to Renewal
5
Basic Renewal Fee
Where goods or services of a registration have not been grouped and classed the registered owner can renew by initially paying the basic renewal fee for the first class
bull $400 if paid using CIPO e-servicebull $500 otherwise
6
441(1) Notice
Once the renewal has been processed the Registrar will send a notice under subsection 441(1) of the Act requiring the registered owner to group the goods or services according to the classes of the Nice Classification
7
Under section 63 of the Regulations the registered owner must provide the Registrar with the statement of goods or services grouped and classed according to the Nice Classification within 6 months after the date of the 441(1) notice
8
6 Months to Provide Statement
When the statement required by the notice is provided the Nice Classification information will be assessed by an examiner
Note that it is not possible to provide Nice Classification information in one request in respect of more than one registration (contrary to section 4 of the Regulations)
9
Statement Reviewed
If the examiner determines that the Nice classification information is notacceptable a report will issue which
bull provides guidance as to the appropriate class for a given good or service and
bull Specifies the amount of any additional required fees
10
Unacceptable Statement
If the registered owner does not respond to this report the Registrar has the authority to make the final determination as to the proper Nice Classification information under subsection 441(4) of the Act
11
Unacceptable Statement
If the examiner determines that the Nice Classification information is acceptable a report will issue confirming the final classification of the goods or services together with a client proof sheet
12
Acceptable Classification
bull If any additional fees are required an adjusted renewal fee notice will be issued
bull These fees must be paid within two months of this notice
bull Failure to pay these fees will result in the expungement of the registration
13
Acceptable Classification
14
Pay Adjusted Renewal Fees Online
15
Pay Adjusted Renewal Fees Online
16
Pay Adjusted Renewal Fees Online
17
Pay Adjusted Renewal Fees Online
If following the issuance of a notice under subsection 441(1) of the Act the registered owner does not respond to the notice by providing the classes for the goods or services the Registrar will send a further notice under subsection 441(3) giving the registered owner 2 months to comply
18
Failure to Furnish
If following the issuance of a notice under subsection 441(3) of the Act the registered owner does not respond by providing the classes for the goods or services the registration may be expunged or not renewed
19
Failure to Furnish
While specificity of goods or services will aid in their classification the Registrar does not have the authority to require that any of the goods or services in the registration be amended to comply with specificity requirements in examination since these provisions are relevant to applications and not registrations
20
Authority to Request Amendment of Statements
21
Renewal Process(Goods or services not classed at renewal)
22
The Inadvisable Stepsto Renewal
bull The registration is renewed and the base fee for one class is paid using the online renewal service and
bull on the same day the goods or services are grouped according to the Nice Classification using the online service and
bull on the same day the fees for the additional Nice classes (as calculated by the registered owner) are submitted by paper
23
Scenario 1
bull The registration is renewed and the base fee for one class is paid using the online renewal service and
bull on the same day the fees for additional Nice classes (as calculated by the registered owner) are submitted by paper however
bull the goods or services have not been grouped and classed
24
Scenario 2
A request to renew is filed by paper together with $400 (renewal fee under the previous Act) and $125 for an additional class (as calculated by the registered owner)
25
Scenario 3
Additional Renewal FeesThe Office is looking to add the ability to pay additional Nice class fees online at the same time as submitting the Nice Classification information
This should speed the process as the registered owner would not have to wait for an adjusted renewal fee notice to pay any outstanding fees
Note that the amount would not be calculated automatically as the final number of classes would not be finalized
26
Renewal process for registrations for which the goods or services have been grouped according to the classes of the Nice Classification system
27
Renewal Fees
Where goods or services of a registration are grouped and classed the registered owner must pay all of the fees set out in Items 14(a) or (b) of the Schedule to the Regulations
The fee is based on the number of classes in the registration at the time of renewal
28
Partial Renewal
29
Partial Renewal
The registration of a trademark may be renewed for some or all of the goods or services in respect of which the trademark is registered
If a registered owner requests the renewal of only some of the goods or services listed in the register for a registration (partial renewal) the registration will be renewed only for those goods and services listed in the renewal request
30
Partial Renewal - Online
A partial renewal can be submitted online only if the
bull Goods or services in respect of which the trademark is registered are grouped according to the classes of the Nice Classification
bull All the goods or services grouped in a class are being renewed and
bull the remaining goods or services are being deleted
31
Partial Renewal ndash Paper
If a partial renewal is not submitted online the Registrar will send a letter acknowledging receipt of the renewal fee
The particulars of the partial renewal will be available and the Registrar will issue a certificate of renewal only after the registration or previous renewal period has expired or the remaining goods or services not being renewed are deleted
32
Partial Renewal ndash Paper
Given the potential delay between submitting a partial renewal and receiving a certificate of renewal registered owners are strongly encouraged to either renew near the expiry of the registration or renewal period or delete the goods or services not being renewed at the time of the partial renewal
33
Partial Renewal
Note that renewing a registration and subsequently deleting some goods or services is not considered a partial renewal as the prescribed renewal fee is based on the number of classes in the registration at the time of renewal
34
35
Extensions of Time
Extensions of time
36
The Branch has been looking for ways to render the end-to-end examination process more efficient and timely
One of the ways to reduce pendency in examination is to amend the practice with respect to the granting extensions of time
Extensions of time
37
Automatic or unwarranted extensions of time slow down the registration process considerably
To put things in perspective in 2018 the Office granted more than 11000 requests for extension of time at the examination stage alone
Extensions of time
38
The practice notice on extensions of time was amended on January 17 to remove the first six-month extension following an examinerrsquos report that was available for practically any reason
Extensions of time
39
Going forward the Office will generally not grant an extension of time to file a response to an examinerrsquos report unless the applicant can demonstrate exceptional circumstances justifying why it is not yet possible to file a proper response
Extensions of time
40
In an effort to implement a smooth transition from the previous practice the practice of not granting an extension of time to reply to an examinerrsquos report unless exceptional circumstances exist will only apply to trademark applications for which an examinerrsquos report has been issued on or after the publication date of this amended practice notice
Extensions of time
41
As a result for applications for which an examinerrsquos report has issued prior to the publication date of January 17 the Office will generally grant the applicant one (1) extension of time of up to a maximum of six (6) months to file a response to an examiners report if the request is justified
Extensions of time
42
The following are examples of what could amount to an exceptional circumstance that would justify an extension of time
Extensions of time No change
43
1 Recent change in trademark agentThere has been a very recent change in the appointed trademark agent and the agent requires time to become familiar with the file
No change
Extensions of time
44
2 Circumstances beyond the control of the person concernedExamples include illness accident death bankruptcy or other serious and unforeseen circumstances
No change
Extensions of time
45
3 TransferThere is a request pending at the Office to record or register the transfer of an application or registered trademark and said transfer would overcome a confusion objection
No change
Extensions of time
46
4 OppositionA co-pending and confusing trademark is the subject of a pending opposition proceeding
Amended
Extensions of time
47
5 Section 45A registered trademark cited as confusing is subject to a pending section 45 proceeding
Amended
Extensions of time
48
6 Official markThe applicant is in the process of actively negotiating a consent from the holder of an official mark
Amended
Extensions of time
49
7 Division of a Protocol applicationThe applicant has filed a request for the division in respect of Canada of the international registration on which the original Protocol application is based and is waiting on the International Bureau for notification that a divisional international registration has been created
No change
Extensions of time
50
8 Respond to an objection which could lead to a refusal under paragraphs 37(1)(b) (c) or (d) of the ActThe applicant requires more time to consider the objection and file a proper response The applicant may request an extension of time for this reason only once in the prosecution of the application
New
Extensions of time
51
9 Compile evidence of distinctiveness under subsection 32(1) of the ActThe applicant is in the process of compiling the sufficient evidence required to show that the trademark was distinctive at the filing date of the application The applicant may request an extension of time for this reason only once in the prosecution of the application New
Fee for Extensions of time
52
The $125 fee to request an extension of time is only required where a person applies to extend the deadline or period of time that is fixed by the Act or prescribed by the Regulations
Fee for Extensions of time
53
Therefore the fee is not required to request an extension of time to respond to an examinerrsquos report as the period of time to respond is not fixed in either the Act or its Regulations
Fee for Extensions of time
54
The fee is required to request an extension of time where the applicant is considered to be in default of the prosecution of the application as the period of time to respond to a default isfixed in section 34 of the Regulations
55
Appointment of a Trademark Agent or an Associate Trademark Agent
The temporary appointment of an agent or associate agent for the purpose of grouping the goods or services of a trademark registration according to the Nice Classification may be done using the Group Goods or Services (Nice Classification) e-service on CIPOrsquos website by including the details of temporary appointment and subsequent revocation in the ldquoClosing detailsrdquo section
56
Temporary Appointment
The undersigned has been appointed under subsection 22(1) of the Trademarks Regulations by the applicant or registered owner as trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as trademark agent is revoked under section 23 of the Trademarks Regulations
57
Temporary Appointment
The undersigned has been appointed under subsection 22(3) of the Trademarks Regulations by the trademark agent that resides in Canada appointed on the following trademark applications and registrations as associate trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as associate agent is revoked under section 23 of the Trademarks Regulations and the appointed trademark agent will remain of record
58
Temporary Appointment
Suggested wording for a temporary appointment and subsequent revocation can also be found in the relevant Practice Notice on the CIPO website
59
Temporary Appointment
60
Appointment of Agent on Transfers
The Office has been receiving requests for transfers under section 48 of the Actin which it is unclear on behalf of whom the request is initiated (ie the transferee or the transferor)
61
Appointment of Agent on Transfers
In view of the requirements in the Regulations on representation and the appointment of trademark agents all requests for transfers under section 48 of the Act must clearly indicate whether the transferee is appointing the agent who submitted the request
62
Appointment of Agent on Transfers
In view of the evidentiary requirements to record or register a transfer on the request of a transferee all requests must indicate which party is requesting the transfer
63
Appointment of Agent on Transfers
Similarly because it is unclear on behalf of whom the request is initiated it is often unclear whether the transferee is appointing an agent to represent them in respect of that trademark application or registration
64
Appointment of Agent on Transfers
Without a new appointment of agent if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
Renewal process for registrations for which the goods or services have not been grouped according to the classes of the Nice Classificationsystem
4
The Recommended Steps to Renewal
5
Basic Renewal Fee
Where goods or services of a registration have not been grouped and classed the registered owner can renew by initially paying the basic renewal fee for the first class
bull $400 if paid using CIPO e-servicebull $500 otherwise
6
441(1) Notice
Once the renewal has been processed the Registrar will send a notice under subsection 441(1) of the Act requiring the registered owner to group the goods or services according to the classes of the Nice Classification
7
Under section 63 of the Regulations the registered owner must provide the Registrar with the statement of goods or services grouped and classed according to the Nice Classification within 6 months after the date of the 441(1) notice
8
6 Months to Provide Statement
When the statement required by the notice is provided the Nice Classification information will be assessed by an examiner
Note that it is not possible to provide Nice Classification information in one request in respect of more than one registration (contrary to section 4 of the Regulations)
9
Statement Reviewed
If the examiner determines that the Nice classification information is notacceptable a report will issue which
bull provides guidance as to the appropriate class for a given good or service and
bull Specifies the amount of any additional required fees
10
Unacceptable Statement
If the registered owner does not respond to this report the Registrar has the authority to make the final determination as to the proper Nice Classification information under subsection 441(4) of the Act
11
Unacceptable Statement
If the examiner determines that the Nice Classification information is acceptable a report will issue confirming the final classification of the goods or services together with a client proof sheet
12
Acceptable Classification
bull If any additional fees are required an adjusted renewal fee notice will be issued
bull These fees must be paid within two months of this notice
bull Failure to pay these fees will result in the expungement of the registration
13
Acceptable Classification
14
Pay Adjusted Renewal Fees Online
15
Pay Adjusted Renewal Fees Online
16
Pay Adjusted Renewal Fees Online
17
Pay Adjusted Renewal Fees Online
If following the issuance of a notice under subsection 441(1) of the Act the registered owner does not respond to the notice by providing the classes for the goods or services the Registrar will send a further notice under subsection 441(3) giving the registered owner 2 months to comply
18
Failure to Furnish
If following the issuance of a notice under subsection 441(3) of the Act the registered owner does not respond by providing the classes for the goods or services the registration may be expunged or not renewed
19
Failure to Furnish
While specificity of goods or services will aid in their classification the Registrar does not have the authority to require that any of the goods or services in the registration be amended to comply with specificity requirements in examination since these provisions are relevant to applications and not registrations
20
Authority to Request Amendment of Statements
21
Renewal Process(Goods or services not classed at renewal)
22
The Inadvisable Stepsto Renewal
bull The registration is renewed and the base fee for one class is paid using the online renewal service and
bull on the same day the goods or services are grouped according to the Nice Classification using the online service and
bull on the same day the fees for the additional Nice classes (as calculated by the registered owner) are submitted by paper
23
Scenario 1
bull The registration is renewed and the base fee for one class is paid using the online renewal service and
bull on the same day the fees for additional Nice classes (as calculated by the registered owner) are submitted by paper however
bull the goods or services have not been grouped and classed
24
Scenario 2
A request to renew is filed by paper together with $400 (renewal fee under the previous Act) and $125 for an additional class (as calculated by the registered owner)
25
Scenario 3
Additional Renewal FeesThe Office is looking to add the ability to pay additional Nice class fees online at the same time as submitting the Nice Classification information
This should speed the process as the registered owner would not have to wait for an adjusted renewal fee notice to pay any outstanding fees
Note that the amount would not be calculated automatically as the final number of classes would not be finalized
26
Renewal process for registrations for which the goods or services have been grouped according to the classes of the Nice Classification system
27
Renewal Fees
Where goods or services of a registration are grouped and classed the registered owner must pay all of the fees set out in Items 14(a) or (b) of the Schedule to the Regulations
The fee is based on the number of classes in the registration at the time of renewal
28
Partial Renewal
29
Partial Renewal
The registration of a trademark may be renewed for some or all of the goods or services in respect of which the trademark is registered
If a registered owner requests the renewal of only some of the goods or services listed in the register for a registration (partial renewal) the registration will be renewed only for those goods and services listed in the renewal request
30
Partial Renewal - Online
A partial renewal can be submitted online only if the
bull Goods or services in respect of which the trademark is registered are grouped according to the classes of the Nice Classification
bull All the goods or services grouped in a class are being renewed and
bull the remaining goods or services are being deleted
31
Partial Renewal ndash Paper
If a partial renewal is not submitted online the Registrar will send a letter acknowledging receipt of the renewal fee
The particulars of the partial renewal will be available and the Registrar will issue a certificate of renewal only after the registration or previous renewal period has expired or the remaining goods or services not being renewed are deleted
32
Partial Renewal ndash Paper
Given the potential delay between submitting a partial renewal and receiving a certificate of renewal registered owners are strongly encouraged to either renew near the expiry of the registration or renewal period or delete the goods or services not being renewed at the time of the partial renewal
33
Partial Renewal
Note that renewing a registration and subsequently deleting some goods or services is not considered a partial renewal as the prescribed renewal fee is based on the number of classes in the registration at the time of renewal
34
35
Extensions of Time
Extensions of time
36
The Branch has been looking for ways to render the end-to-end examination process more efficient and timely
One of the ways to reduce pendency in examination is to amend the practice with respect to the granting extensions of time
Extensions of time
37
Automatic or unwarranted extensions of time slow down the registration process considerably
To put things in perspective in 2018 the Office granted more than 11000 requests for extension of time at the examination stage alone
Extensions of time
38
The practice notice on extensions of time was amended on January 17 to remove the first six-month extension following an examinerrsquos report that was available for practically any reason
Extensions of time
39
Going forward the Office will generally not grant an extension of time to file a response to an examinerrsquos report unless the applicant can demonstrate exceptional circumstances justifying why it is not yet possible to file a proper response
Extensions of time
40
In an effort to implement a smooth transition from the previous practice the practice of not granting an extension of time to reply to an examinerrsquos report unless exceptional circumstances exist will only apply to trademark applications for which an examinerrsquos report has been issued on or after the publication date of this amended practice notice
Extensions of time
41
As a result for applications for which an examinerrsquos report has issued prior to the publication date of January 17 the Office will generally grant the applicant one (1) extension of time of up to a maximum of six (6) months to file a response to an examiners report if the request is justified
Extensions of time
42
The following are examples of what could amount to an exceptional circumstance that would justify an extension of time
Extensions of time No change
43
1 Recent change in trademark agentThere has been a very recent change in the appointed trademark agent and the agent requires time to become familiar with the file
No change
Extensions of time
44
2 Circumstances beyond the control of the person concernedExamples include illness accident death bankruptcy or other serious and unforeseen circumstances
No change
Extensions of time
45
3 TransferThere is a request pending at the Office to record or register the transfer of an application or registered trademark and said transfer would overcome a confusion objection
No change
Extensions of time
46
4 OppositionA co-pending and confusing trademark is the subject of a pending opposition proceeding
Amended
Extensions of time
47
5 Section 45A registered trademark cited as confusing is subject to a pending section 45 proceeding
Amended
Extensions of time
48
6 Official markThe applicant is in the process of actively negotiating a consent from the holder of an official mark
Amended
Extensions of time
49
7 Division of a Protocol applicationThe applicant has filed a request for the division in respect of Canada of the international registration on which the original Protocol application is based and is waiting on the International Bureau for notification that a divisional international registration has been created
No change
Extensions of time
50
8 Respond to an objection which could lead to a refusal under paragraphs 37(1)(b) (c) or (d) of the ActThe applicant requires more time to consider the objection and file a proper response The applicant may request an extension of time for this reason only once in the prosecution of the application
New
Extensions of time
51
9 Compile evidence of distinctiveness under subsection 32(1) of the ActThe applicant is in the process of compiling the sufficient evidence required to show that the trademark was distinctive at the filing date of the application The applicant may request an extension of time for this reason only once in the prosecution of the application New
Fee for Extensions of time
52
The $125 fee to request an extension of time is only required where a person applies to extend the deadline or period of time that is fixed by the Act or prescribed by the Regulations
Fee for Extensions of time
53
Therefore the fee is not required to request an extension of time to respond to an examinerrsquos report as the period of time to respond is not fixed in either the Act or its Regulations
Fee for Extensions of time
54
The fee is required to request an extension of time where the applicant is considered to be in default of the prosecution of the application as the period of time to respond to a default isfixed in section 34 of the Regulations
55
Appointment of a Trademark Agent or an Associate Trademark Agent
The temporary appointment of an agent or associate agent for the purpose of grouping the goods or services of a trademark registration according to the Nice Classification may be done using the Group Goods or Services (Nice Classification) e-service on CIPOrsquos website by including the details of temporary appointment and subsequent revocation in the ldquoClosing detailsrdquo section
56
Temporary Appointment
The undersigned has been appointed under subsection 22(1) of the Trademarks Regulations by the applicant or registered owner as trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as trademark agent is revoked under section 23 of the Trademarks Regulations
57
Temporary Appointment
The undersigned has been appointed under subsection 22(3) of the Trademarks Regulations by the trademark agent that resides in Canada appointed on the following trademark applications and registrations as associate trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as associate agent is revoked under section 23 of the Trademarks Regulations and the appointed trademark agent will remain of record
58
Temporary Appointment
Suggested wording for a temporary appointment and subsequent revocation can also be found in the relevant Practice Notice on the CIPO website
59
Temporary Appointment
60
Appointment of Agent on Transfers
The Office has been receiving requests for transfers under section 48 of the Actin which it is unclear on behalf of whom the request is initiated (ie the transferee or the transferor)
61
Appointment of Agent on Transfers
In view of the requirements in the Regulations on representation and the appointment of trademark agents all requests for transfers under section 48 of the Act must clearly indicate whether the transferee is appointing the agent who submitted the request
62
Appointment of Agent on Transfers
In view of the evidentiary requirements to record or register a transfer on the request of a transferee all requests must indicate which party is requesting the transfer
63
Appointment of Agent on Transfers
Similarly because it is unclear on behalf of whom the request is initiated it is often unclear whether the transferee is appointing an agent to represent them in respect of that trademark application or registration
64
Appointment of Agent on Transfers
Without a new appointment of agent if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
The Recommended Steps to Renewal
5
Basic Renewal Fee
Where goods or services of a registration have not been grouped and classed the registered owner can renew by initially paying the basic renewal fee for the first class
bull $400 if paid using CIPO e-servicebull $500 otherwise
6
441(1) Notice
Once the renewal has been processed the Registrar will send a notice under subsection 441(1) of the Act requiring the registered owner to group the goods or services according to the classes of the Nice Classification
7
Under section 63 of the Regulations the registered owner must provide the Registrar with the statement of goods or services grouped and classed according to the Nice Classification within 6 months after the date of the 441(1) notice
8
6 Months to Provide Statement
When the statement required by the notice is provided the Nice Classification information will be assessed by an examiner
Note that it is not possible to provide Nice Classification information in one request in respect of more than one registration (contrary to section 4 of the Regulations)
9
Statement Reviewed
If the examiner determines that the Nice classification information is notacceptable a report will issue which
bull provides guidance as to the appropriate class for a given good or service and
bull Specifies the amount of any additional required fees
10
Unacceptable Statement
If the registered owner does not respond to this report the Registrar has the authority to make the final determination as to the proper Nice Classification information under subsection 441(4) of the Act
11
Unacceptable Statement
If the examiner determines that the Nice Classification information is acceptable a report will issue confirming the final classification of the goods or services together with a client proof sheet
12
Acceptable Classification
bull If any additional fees are required an adjusted renewal fee notice will be issued
bull These fees must be paid within two months of this notice
bull Failure to pay these fees will result in the expungement of the registration
13
Acceptable Classification
14
Pay Adjusted Renewal Fees Online
15
Pay Adjusted Renewal Fees Online
16
Pay Adjusted Renewal Fees Online
17
Pay Adjusted Renewal Fees Online
If following the issuance of a notice under subsection 441(1) of the Act the registered owner does not respond to the notice by providing the classes for the goods or services the Registrar will send a further notice under subsection 441(3) giving the registered owner 2 months to comply
18
Failure to Furnish
If following the issuance of a notice under subsection 441(3) of the Act the registered owner does not respond by providing the classes for the goods or services the registration may be expunged or not renewed
19
Failure to Furnish
While specificity of goods or services will aid in their classification the Registrar does not have the authority to require that any of the goods or services in the registration be amended to comply with specificity requirements in examination since these provisions are relevant to applications and not registrations
20
Authority to Request Amendment of Statements
21
Renewal Process(Goods or services not classed at renewal)
22
The Inadvisable Stepsto Renewal
bull The registration is renewed and the base fee for one class is paid using the online renewal service and
bull on the same day the goods or services are grouped according to the Nice Classification using the online service and
bull on the same day the fees for the additional Nice classes (as calculated by the registered owner) are submitted by paper
23
Scenario 1
bull The registration is renewed and the base fee for one class is paid using the online renewal service and
bull on the same day the fees for additional Nice classes (as calculated by the registered owner) are submitted by paper however
bull the goods or services have not been grouped and classed
24
Scenario 2
A request to renew is filed by paper together with $400 (renewal fee under the previous Act) and $125 for an additional class (as calculated by the registered owner)
25
Scenario 3
Additional Renewal FeesThe Office is looking to add the ability to pay additional Nice class fees online at the same time as submitting the Nice Classification information
This should speed the process as the registered owner would not have to wait for an adjusted renewal fee notice to pay any outstanding fees
Note that the amount would not be calculated automatically as the final number of classes would not be finalized
26
Renewal process for registrations for which the goods or services have been grouped according to the classes of the Nice Classification system
27
Renewal Fees
Where goods or services of a registration are grouped and classed the registered owner must pay all of the fees set out in Items 14(a) or (b) of the Schedule to the Regulations
The fee is based on the number of classes in the registration at the time of renewal
28
Partial Renewal
29
Partial Renewal
The registration of a trademark may be renewed for some or all of the goods or services in respect of which the trademark is registered
If a registered owner requests the renewal of only some of the goods or services listed in the register for a registration (partial renewal) the registration will be renewed only for those goods and services listed in the renewal request
30
Partial Renewal - Online
A partial renewal can be submitted online only if the
bull Goods or services in respect of which the trademark is registered are grouped according to the classes of the Nice Classification
bull All the goods or services grouped in a class are being renewed and
bull the remaining goods or services are being deleted
31
Partial Renewal ndash Paper
If a partial renewal is not submitted online the Registrar will send a letter acknowledging receipt of the renewal fee
The particulars of the partial renewal will be available and the Registrar will issue a certificate of renewal only after the registration or previous renewal period has expired or the remaining goods or services not being renewed are deleted
32
Partial Renewal ndash Paper
Given the potential delay between submitting a partial renewal and receiving a certificate of renewal registered owners are strongly encouraged to either renew near the expiry of the registration or renewal period or delete the goods or services not being renewed at the time of the partial renewal
33
Partial Renewal
Note that renewing a registration and subsequently deleting some goods or services is not considered a partial renewal as the prescribed renewal fee is based on the number of classes in the registration at the time of renewal
34
35
Extensions of Time
Extensions of time
36
The Branch has been looking for ways to render the end-to-end examination process more efficient and timely
One of the ways to reduce pendency in examination is to amend the practice with respect to the granting extensions of time
Extensions of time
37
Automatic or unwarranted extensions of time slow down the registration process considerably
To put things in perspective in 2018 the Office granted more than 11000 requests for extension of time at the examination stage alone
Extensions of time
38
The practice notice on extensions of time was amended on January 17 to remove the first six-month extension following an examinerrsquos report that was available for practically any reason
Extensions of time
39
Going forward the Office will generally not grant an extension of time to file a response to an examinerrsquos report unless the applicant can demonstrate exceptional circumstances justifying why it is not yet possible to file a proper response
Extensions of time
40
In an effort to implement a smooth transition from the previous practice the practice of not granting an extension of time to reply to an examinerrsquos report unless exceptional circumstances exist will only apply to trademark applications for which an examinerrsquos report has been issued on or after the publication date of this amended practice notice
Extensions of time
41
As a result for applications for which an examinerrsquos report has issued prior to the publication date of January 17 the Office will generally grant the applicant one (1) extension of time of up to a maximum of six (6) months to file a response to an examiners report if the request is justified
Extensions of time
42
The following are examples of what could amount to an exceptional circumstance that would justify an extension of time
Extensions of time No change
43
1 Recent change in trademark agentThere has been a very recent change in the appointed trademark agent and the agent requires time to become familiar with the file
No change
Extensions of time
44
2 Circumstances beyond the control of the person concernedExamples include illness accident death bankruptcy or other serious and unforeseen circumstances
No change
Extensions of time
45
3 TransferThere is a request pending at the Office to record or register the transfer of an application or registered trademark and said transfer would overcome a confusion objection
No change
Extensions of time
46
4 OppositionA co-pending and confusing trademark is the subject of a pending opposition proceeding
Amended
Extensions of time
47
5 Section 45A registered trademark cited as confusing is subject to a pending section 45 proceeding
Amended
Extensions of time
48
6 Official markThe applicant is in the process of actively negotiating a consent from the holder of an official mark
Amended
Extensions of time
49
7 Division of a Protocol applicationThe applicant has filed a request for the division in respect of Canada of the international registration on which the original Protocol application is based and is waiting on the International Bureau for notification that a divisional international registration has been created
No change
Extensions of time
50
8 Respond to an objection which could lead to a refusal under paragraphs 37(1)(b) (c) or (d) of the ActThe applicant requires more time to consider the objection and file a proper response The applicant may request an extension of time for this reason only once in the prosecution of the application
New
Extensions of time
51
9 Compile evidence of distinctiveness under subsection 32(1) of the ActThe applicant is in the process of compiling the sufficient evidence required to show that the trademark was distinctive at the filing date of the application The applicant may request an extension of time for this reason only once in the prosecution of the application New
Fee for Extensions of time
52
The $125 fee to request an extension of time is only required where a person applies to extend the deadline or period of time that is fixed by the Act or prescribed by the Regulations
Fee for Extensions of time
53
Therefore the fee is not required to request an extension of time to respond to an examinerrsquos report as the period of time to respond is not fixed in either the Act or its Regulations
Fee for Extensions of time
54
The fee is required to request an extension of time where the applicant is considered to be in default of the prosecution of the application as the period of time to respond to a default isfixed in section 34 of the Regulations
55
Appointment of a Trademark Agent or an Associate Trademark Agent
The temporary appointment of an agent or associate agent for the purpose of grouping the goods or services of a trademark registration according to the Nice Classification may be done using the Group Goods or Services (Nice Classification) e-service on CIPOrsquos website by including the details of temporary appointment and subsequent revocation in the ldquoClosing detailsrdquo section
56
Temporary Appointment
The undersigned has been appointed under subsection 22(1) of the Trademarks Regulations by the applicant or registered owner as trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as trademark agent is revoked under section 23 of the Trademarks Regulations
57
Temporary Appointment
The undersigned has been appointed under subsection 22(3) of the Trademarks Regulations by the trademark agent that resides in Canada appointed on the following trademark applications and registrations as associate trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as associate agent is revoked under section 23 of the Trademarks Regulations and the appointed trademark agent will remain of record
58
Temporary Appointment
Suggested wording for a temporary appointment and subsequent revocation can also be found in the relevant Practice Notice on the CIPO website
59
Temporary Appointment
60
Appointment of Agent on Transfers
The Office has been receiving requests for transfers under section 48 of the Actin which it is unclear on behalf of whom the request is initiated (ie the transferee or the transferor)
61
Appointment of Agent on Transfers
In view of the requirements in the Regulations on representation and the appointment of trademark agents all requests for transfers under section 48 of the Act must clearly indicate whether the transferee is appointing the agent who submitted the request
62
Appointment of Agent on Transfers
In view of the evidentiary requirements to record or register a transfer on the request of a transferee all requests must indicate which party is requesting the transfer
63
Appointment of Agent on Transfers
Similarly because it is unclear on behalf of whom the request is initiated it is often unclear whether the transferee is appointing an agent to represent them in respect of that trademark application or registration
64
Appointment of Agent on Transfers
Without a new appointment of agent if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
Basic Renewal Fee
Where goods or services of a registration have not been grouped and classed the registered owner can renew by initially paying the basic renewal fee for the first class
bull $400 if paid using CIPO e-servicebull $500 otherwise
6
441(1) Notice
Once the renewal has been processed the Registrar will send a notice under subsection 441(1) of the Act requiring the registered owner to group the goods or services according to the classes of the Nice Classification
7
Under section 63 of the Regulations the registered owner must provide the Registrar with the statement of goods or services grouped and classed according to the Nice Classification within 6 months after the date of the 441(1) notice
8
6 Months to Provide Statement
When the statement required by the notice is provided the Nice Classification information will be assessed by an examiner
Note that it is not possible to provide Nice Classification information in one request in respect of more than one registration (contrary to section 4 of the Regulations)
9
Statement Reviewed
If the examiner determines that the Nice classification information is notacceptable a report will issue which
bull provides guidance as to the appropriate class for a given good or service and
bull Specifies the amount of any additional required fees
10
Unacceptable Statement
If the registered owner does not respond to this report the Registrar has the authority to make the final determination as to the proper Nice Classification information under subsection 441(4) of the Act
11
Unacceptable Statement
If the examiner determines that the Nice Classification information is acceptable a report will issue confirming the final classification of the goods or services together with a client proof sheet
12
Acceptable Classification
bull If any additional fees are required an adjusted renewal fee notice will be issued
bull These fees must be paid within two months of this notice
bull Failure to pay these fees will result in the expungement of the registration
13
Acceptable Classification
14
Pay Adjusted Renewal Fees Online
15
Pay Adjusted Renewal Fees Online
16
Pay Adjusted Renewal Fees Online
17
Pay Adjusted Renewal Fees Online
If following the issuance of a notice under subsection 441(1) of the Act the registered owner does not respond to the notice by providing the classes for the goods or services the Registrar will send a further notice under subsection 441(3) giving the registered owner 2 months to comply
18
Failure to Furnish
If following the issuance of a notice under subsection 441(3) of the Act the registered owner does not respond by providing the classes for the goods or services the registration may be expunged or not renewed
19
Failure to Furnish
While specificity of goods or services will aid in their classification the Registrar does not have the authority to require that any of the goods or services in the registration be amended to comply with specificity requirements in examination since these provisions are relevant to applications and not registrations
20
Authority to Request Amendment of Statements
21
Renewal Process(Goods or services not classed at renewal)
22
The Inadvisable Stepsto Renewal
bull The registration is renewed and the base fee for one class is paid using the online renewal service and
bull on the same day the goods or services are grouped according to the Nice Classification using the online service and
bull on the same day the fees for the additional Nice classes (as calculated by the registered owner) are submitted by paper
23
Scenario 1
bull The registration is renewed and the base fee for one class is paid using the online renewal service and
bull on the same day the fees for additional Nice classes (as calculated by the registered owner) are submitted by paper however
bull the goods or services have not been grouped and classed
24
Scenario 2
A request to renew is filed by paper together with $400 (renewal fee under the previous Act) and $125 for an additional class (as calculated by the registered owner)
25
Scenario 3
Additional Renewal FeesThe Office is looking to add the ability to pay additional Nice class fees online at the same time as submitting the Nice Classification information
This should speed the process as the registered owner would not have to wait for an adjusted renewal fee notice to pay any outstanding fees
Note that the amount would not be calculated automatically as the final number of classes would not be finalized
26
Renewal process for registrations for which the goods or services have been grouped according to the classes of the Nice Classification system
27
Renewal Fees
Where goods or services of a registration are grouped and classed the registered owner must pay all of the fees set out in Items 14(a) or (b) of the Schedule to the Regulations
The fee is based on the number of classes in the registration at the time of renewal
28
Partial Renewal
29
Partial Renewal
The registration of a trademark may be renewed for some or all of the goods or services in respect of which the trademark is registered
If a registered owner requests the renewal of only some of the goods or services listed in the register for a registration (partial renewal) the registration will be renewed only for those goods and services listed in the renewal request
30
Partial Renewal - Online
A partial renewal can be submitted online only if the
bull Goods or services in respect of which the trademark is registered are grouped according to the classes of the Nice Classification
bull All the goods or services grouped in a class are being renewed and
bull the remaining goods or services are being deleted
31
Partial Renewal ndash Paper
If a partial renewal is not submitted online the Registrar will send a letter acknowledging receipt of the renewal fee
The particulars of the partial renewal will be available and the Registrar will issue a certificate of renewal only after the registration or previous renewal period has expired or the remaining goods or services not being renewed are deleted
32
Partial Renewal ndash Paper
Given the potential delay between submitting a partial renewal and receiving a certificate of renewal registered owners are strongly encouraged to either renew near the expiry of the registration or renewal period or delete the goods or services not being renewed at the time of the partial renewal
33
Partial Renewal
Note that renewing a registration and subsequently deleting some goods or services is not considered a partial renewal as the prescribed renewal fee is based on the number of classes in the registration at the time of renewal
34
35
Extensions of Time
Extensions of time
36
The Branch has been looking for ways to render the end-to-end examination process more efficient and timely
One of the ways to reduce pendency in examination is to amend the practice with respect to the granting extensions of time
Extensions of time
37
Automatic or unwarranted extensions of time slow down the registration process considerably
To put things in perspective in 2018 the Office granted more than 11000 requests for extension of time at the examination stage alone
Extensions of time
38
The practice notice on extensions of time was amended on January 17 to remove the first six-month extension following an examinerrsquos report that was available for practically any reason
Extensions of time
39
Going forward the Office will generally not grant an extension of time to file a response to an examinerrsquos report unless the applicant can demonstrate exceptional circumstances justifying why it is not yet possible to file a proper response
Extensions of time
40
In an effort to implement a smooth transition from the previous practice the practice of not granting an extension of time to reply to an examinerrsquos report unless exceptional circumstances exist will only apply to trademark applications for which an examinerrsquos report has been issued on or after the publication date of this amended practice notice
Extensions of time
41
As a result for applications for which an examinerrsquos report has issued prior to the publication date of January 17 the Office will generally grant the applicant one (1) extension of time of up to a maximum of six (6) months to file a response to an examiners report if the request is justified
Extensions of time
42
The following are examples of what could amount to an exceptional circumstance that would justify an extension of time
Extensions of time No change
43
1 Recent change in trademark agentThere has been a very recent change in the appointed trademark agent and the agent requires time to become familiar with the file
No change
Extensions of time
44
2 Circumstances beyond the control of the person concernedExamples include illness accident death bankruptcy or other serious and unforeseen circumstances
No change
Extensions of time
45
3 TransferThere is a request pending at the Office to record or register the transfer of an application or registered trademark and said transfer would overcome a confusion objection
No change
Extensions of time
46
4 OppositionA co-pending and confusing trademark is the subject of a pending opposition proceeding
Amended
Extensions of time
47
5 Section 45A registered trademark cited as confusing is subject to a pending section 45 proceeding
Amended
Extensions of time
48
6 Official markThe applicant is in the process of actively negotiating a consent from the holder of an official mark
Amended
Extensions of time
49
7 Division of a Protocol applicationThe applicant has filed a request for the division in respect of Canada of the international registration on which the original Protocol application is based and is waiting on the International Bureau for notification that a divisional international registration has been created
No change
Extensions of time
50
8 Respond to an objection which could lead to a refusal under paragraphs 37(1)(b) (c) or (d) of the ActThe applicant requires more time to consider the objection and file a proper response The applicant may request an extension of time for this reason only once in the prosecution of the application
New
Extensions of time
51
9 Compile evidence of distinctiveness under subsection 32(1) of the ActThe applicant is in the process of compiling the sufficient evidence required to show that the trademark was distinctive at the filing date of the application The applicant may request an extension of time for this reason only once in the prosecution of the application New
Fee for Extensions of time
52
The $125 fee to request an extension of time is only required where a person applies to extend the deadline or period of time that is fixed by the Act or prescribed by the Regulations
Fee for Extensions of time
53
Therefore the fee is not required to request an extension of time to respond to an examinerrsquos report as the period of time to respond is not fixed in either the Act or its Regulations
Fee for Extensions of time
54
The fee is required to request an extension of time where the applicant is considered to be in default of the prosecution of the application as the period of time to respond to a default isfixed in section 34 of the Regulations
55
Appointment of a Trademark Agent or an Associate Trademark Agent
The temporary appointment of an agent or associate agent for the purpose of grouping the goods or services of a trademark registration according to the Nice Classification may be done using the Group Goods or Services (Nice Classification) e-service on CIPOrsquos website by including the details of temporary appointment and subsequent revocation in the ldquoClosing detailsrdquo section
56
Temporary Appointment
The undersigned has been appointed under subsection 22(1) of the Trademarks Regulations by the applicant or registered owner as trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as trademark agent is revoked under section 23 of the Trademarks Regulations
57
Temporary Appointment
The undersigned has been appointed under subsection 22(3) of the Trademarks Regulations by the trademark agent that resides in Canada appointed on the following trademark applications and registrations as associate trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as associate agent is revoked under section 23 of the Trademarks Regulations and the appointed trademark agent will remain of record
58
Temporary Appointment
Suggested wording for a temporary appointment and subsequent revocation can also be found in the relevant Practice Notice on the CIPO website
59
Temporary Appointment
60
Appointment of Agent on Transfers
The Office has been receiving requests for transfers under section 48 of the Actin which it is unclear on behalf of whom the request is initiated (ie the transferee or the transferor)
61
Appointment of Agent on Transfers
In view of the requirements in the Regulations on representation and the appointment of trademark agents all requests for transfers under section 48 of the Act must clearly indicate whether the transferee is appointing the agent who submitted the request
62
Appointment of Agent on Transfers
In view of the evidentiary requirements to record or register a transfer on the request of a transferee all requests must indicate which party is requesting the transfer
63
Appointment of Agent on Transfers
Similarly because it is unclear on behalf of whom the request is initiated it is often unclear whether the transferee is appointing an agent to represent them in respect of that trademark application or registration
64
Appointment of Agent on Transfers
Without a new appointment of agent if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
441(1) Notice
Once the renewal has been processed the Registrar will send a notice under subsection 441(1) of the Act requiring the registered owner to group the goods or services according to the classes of the Nice Classification
7
Under section 63 of the Regulations the registered owner must provide the Registrar with the statement of goods or services grouped and classed according to the Nice Classification within 6 months after the date of the 441(1) notice
8
6 Months to Provide Statement
When the statement required by the notice is provided the Nice Classification information will be assessed by an examiner
Note that it is not possible to provide Nice Classification information in one request in respect of more than one registration (contrary to section 4 of the Regulations)
9
Statement Reviewed
If the examiner determines that the Nice classification information is notacceptable a report will issue which
bull provides guidance as to the appropriate class for a given good or service and
bull Specifies the amount of any additional required fees
10
Unacceptable Statement
If the registered owner does not respond to this report the Registrar has the authority to make the final determination as to the proper Nice Classification information under subsection 441(4) of the Act
11
Unacceptable Statement
If the examiner determines that the Nice Classification information is acceptable a report will issue confirming the final classification of the goods or services together with a client proof sheet
12
Acceptable Classification
bull If any additional fees are required an adjusted renewal fee notice will be issued
bull These fees must be paid within two months of this notice
bull Failure to pay these fees will result in the expungement of the registration
13
Acceptable Classification
14
Pay Adjusted Renewal Fees Online
15
Pay Adjusted Renewal Fees Online
16
Pay Adjusted Renewal Fees Online
17
Pay Adjusted Renewal Fees Online
If following the issuance of a notice under subsection 441(1) of the Act the registered owner does not respond to the notice by providing the classes for the goods or services the Registrar will send a further notice under subsection 441(3) giving the registered owner 2 months to comply
18
Failure to Furnish
If following the issuance of a notice under subsection 441(3) of the Act the registered owner does not respond by providing the classes for the goods or services the registration may be expunged or not renewed
19
Failure to Furnish
While specificity of goods or services will aid in their classification the Registrar does not have the authority to require that any of the goods or services in the registration be amended to comply with specificity requirements in examination since these provisions are relevant to applications and not registrations
20
Authority to Request Amendment of Statements
21
Renewal Process(Goods or services not classed at renewal)
22
The Inadvisable Stepsto Renewal
bull The registration is renewed and the base fee for one class is paid using the online renewal service and
bull on the same day the goods or services are grouped according to the Nice Classification using the online service and
bull on the same day the fees for the additional Nice classes (as calculated by the registered owner) are submitted by paper
23
Scenario 1
bull The registration is renewed and the base fee for one class is paid using the online renewal service and
bull on the same day the fees for additional Nice classes (as calculated by the registered owner) are submitted by paper however
bull the goods or services have not been grouped and classed
24
Scenario 2
A request to renew is filed by paper together with $400 (renewal fee under the previous Act) and $125 for an additional class (as calculated by the registered owner)
25
Scenario 3
Additional Renewal FeesThe Office is looking to add the ability to pay additional Nice class fees online at the same time as submitting the Nice Classification information
This should speed the process as the registered owner would not have to wait for an adjusted renewal fee notice to pay any outstanding fees
Note that the amount would not be calculated automatically as the final number of classes would not be finalized
26
Renewal process for registrations for which the goods or services have been grouped according to the classes of the Nice Classification system
27
Renewal Fees
Where goods or services of a registration are grouped and classed the registered owner must pay all of the fees set out in Items 14(a) or (b) of the Schedule to the Regulations
The fee is based on the number of classes in the registration at the time of renewal
28
Partial Renewal
29
Partial Renewal
The registration of a trademark may be renewed for some or all of the goods or services in respect of which the trademark is registered
If a registered owner requests the renewal of only some of the goods or services listed in the register for a registration (partial renewal) the registration will be renewed only for those goods and services listed in the renewal request
30
Partial Renewal - Online
A partial renewal can be submitted online only if the
bull Goods or services in respect of which the trademark is registered are grouped according to the classes of the Nice Classification
bull All the goods or services grouped in a class are being renewed and
bull the remaining goods or services are being deleted
31
Partial Renewal ndash Paper
If a partial renewal is not submitted online the Registrar will send a letter acknowledging receipt of the renewal fee
The particulars of the partial renewal will be available and the Registrar will issue a certificate of renewal only after the registration or previous renewal period has expired or the remaining goods or services not being renewed are deleted
32
Partial Renewal ndash Paper
Given the potential delay between submitting a partial renewal and receiving a certificate of renewal registered owners are strongly encouraged to either renew near the expiry of the registration or renewal period or delete the goods or services not being renewed at the time of the partial renewal
33
Partial Renewal
Note that renewing a registration and subsequently deleting some goods or services is not considered a partial renewal as the prescribed renewal fee is based on the number of classes in the registration at the time of renewal
34
35
Extensions of Time
Extensions of time
36
The Branch has been looking for ways to render the end-to-end examination process more efficient and timely
One of the ways to reduce pendency in examination is to amend the practice with respect to the granting extensions of time
Extensions of time
37
Automatic or unwarranted extensions of time slow down the registration process considerably
To put things in perspective in 2018 the Office granted more than 11000 requests for extension of time at the examination stage alone
Extensions of time
38
The practice notice on extensions of time was amended on January 17 to remove the first six-month extension following an examinerrsquos report that was available for practically any reason
Extensions of time
39
Going forward the Office will generally not grant an extension of time to file a response to an examinerrsquos report unless the applicant can demonstrate exceptional circumstances justifying why it is not yet possible to file a proper response
Extensions of time
40
In an effort to implement a smooth transition from the previous practice the practice of not granting an extension of time to reply to an examinerrsquos report unless exceptional circumstances exist will only apply to trademark applications for which an examinerrsquos report has been issued on or after the publication date of this amended practice notice
Extensions of time
41
As a result for applications for which an examinerrsquos report has issued prior to the publication date of January 17 the Office will generally grant the applicant one (1) extension of time of up to a maximum of six (6) months to file a response to an examiners report if the request is justified
Extensions of time
42
The following are examples of what could amount to an exceptional circumstance that would justify an extension of time
Extensions of time No change
43
1 Recent change in trademark agentThere has been a very recent change in the appointed trademark agent and the agent requires time to become familiar with the file
No change
Extensions of time
44
2 Circumstances beyond the control of the person concernedExamples include illness accident death bankruptcy or other serious and unforeseen circumstances
No change
Extensions of time
45
3 TransferThere is a request pending at the Office to record or register the transfer of an application or registered trademark and said transfer would overcome a confusion objection
No change
Extensions of time
46
4 OppositionA co-pending and confusing trademark is the subject of a pending opposition proceeding
Amended
Extensions of time
47
5 Section 45A registered trademark cited as confusing is subject to a pending section 45 proceeding
Amended
Extensions of time
48
6 Official markThe applicant is in the process of actively negotiating a consent from the holder of an official mark
Amended
Extensions of time
49
7 Division of a Protocol applicationThe applicant has filed a request for the division in respect of Canada of the international registration on which the original Protocol application is based and is waiting on the International Bureau for notification that a divisional international registration has been created
No change
Extensions of time
50
8 Respond to an objection which could lead to a refusal under paragraphs 37(1)(b) (c) or (d) of the ActThe applicant requires more time to consider the objection and file a proper response The applicant may request an extension of time for this reason only once in the prosecution of the application
New
Extensions of time
51
9 Compile evidence of distinctiveness under subsection 32(1) of the ActThe applicant is in the process of compiling the sufficient evidence required to show that the trademark was distinctive at the filing date of the application The applicant may request an extension of time for this reason only once in the prosecution of the application New
Fee for Extensions of time
52
The $125 fee to request an extension of time is only required where a person applies to extend the deadline or period of time that is fixed by the Act or prescribed by the Regulations
Fee for Extensions of time
53
Therefore the fee is not required to request an extension of time to respond to an examinerrsquos report as the period of time to respond is not fixed in either the Act or its Regulations
Fee for Extensions of time
54
The fee is required to request an extension of time where the applicant is considered to be in default of the prosecution of the application as the period of time to respond to a default isfixed in section 34 of the Regulations
55
Appointment of a Trademark Agent or an Associate Trademark Agent
The temporary appointment of an agent or associate agent for the purpose of grouping the goods or services of a trademark registration according to the Nice Classification may be done using the Group Goods or Services (Nice Classification) e-service on CIPOrsquos website by including the details of temporary appointment and subsequent revocation in the ldquoClosing detailsrdquo section
56
Temporary Appointment
The undersigned has been appointed under subsection 22(1) of the Trademarks Regulations by the applicant or registered owner as trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as trademark agent is revoked under section 23 of the Trademarks Regulations
57
Temporary Appointment
The undersigned has been appointed under subsection 22(3) of the Trademarks Regulations by the trademark agent that resides in Canada appointed on the following trademark applications and registrations as associate trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as associate agent is revoked under section 23 of the Trademarks Regulations and the appointed trademark agent will remain of record
58
Temporary Appointment
Suggested wording for a temporary appointment and subsequent revocation can also be found in the relevant Practice Notice on the CIPO website
59
Temporary Appointment
60
Appointment of Agent on Transfers
The Office has been receiving requests for transfers under section 48 of the Actin which it is unclear on behalf of whom the request is initiated (ie the transferee or the transferor)
61
Appointment of Agent on Transfers
In view of the requirements in the Regulations on representation and the appointment of trademark agents all requests for transfers under section 48 of the Act must clearly indicate whether the transferee is appointing the agent who submitted the request
62
Appointment of Agent on Transfers
In view of the evidentiary requirements to record or register a transfer on the request of a transferee all requests must indicate which party is requesting the transfer
63
Appointment of Agent on Transfers
Similarly because it is unclear on behalf of whom the request is initiated it is often unclear whether the transferee is appointing an agent to represent them in respect of that trademark application or registration
64
Appointment of Agent on Transfers
Without a new appointment of agent if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
Under section 63 of the Regulations the registered owner must provide the Registrar with the statement of goods or services grouped and classed according to the Nice Classification within 6 months after the date of the 441(1) notice
8
6 Months to Provide Statement
When the statement required by the notice is provided the Nice Classification information will be assessed by an examiner
Note that it is not possible to provide Nice Classification information in one request in respect of more than one registration (contrary to section 4 of the Regulations)
9
Statement Reviewed
If the examiner determines that the Nice classification information is notacceptable a report will issue which
bull provides guidance as to the appropriate class for a given good or service and
bull Specifies the amount of any additional required fees
10
Unacceptable Statement
If the registered owner does not respond to this report the Registrar has the authority to make the final determination as to the proper Nice Classification information under subsection 441(4) of the Act
11
Unacceptable Statement
If the examiner determines that the Nice Classification information is acceptable a report will issue confirming the final classification of the goods or services together with a client proof sheet
12
Acceptable Classification
bull If any additional fees are required an adjusted renewal fee notice will be issued
bull These fees must be paid within two months of this notice
bull Failure to pay these fees will result in the expungement of the registration
13
Acceptable Classification
14
Pay Adjusted Renewal Fees Online
15
Pay Adjusted Renewal Fees Online
16
Pay Adjusted Renewal Fees Online
17
Pay Adjusted Renewal Fees Online
If following the issuance of a notice under subsection 441(1) of the Act the registered owner does not respond to the notice by providing the classes for the goods or services the Registrar will send a further notice under subsection 441(3) giving the registered owner 2 months to comply
18
Failure to Furnish
If following the issuance of a notice under subsection 441(3) of the Act the registered owner does not respond by providing the classes for the goods or services the registration may be expunged or not renewed
19
Failure to Furnish
While specificity of goods or services will aid in their classification the Registrar does not have the authority to require that any of the goods or services in the registration be amended to comply with specificity requirements in examination since these provisions are relevant to applications and not registrations
20
Authority to Request Amendment of Statements
21
Renewal Process(Goods or services not classed at renewal)
22
The Inadvisable Stepsto Renewal
bull The registration is renewed and the base fee for one class is paid using the online renewal service and
bull on the same day the goods or services are grouped according to the Nice Classification using the online service and
bull on the same day the fees for the additional Nice classes (as calculated by the registered owner) are submitted by paper
23
Scenario 1
bull The registration is renewed and the base fee for one class is paid using the online renewal service and
bull on the same day the fees for additional Nice classes (as calculated by the registered owner) are submitted by paper however
bull the goods or services have not been grouped and classed
24
Scenario 2
A request to renew is filed by paper together with $400 (renewal fee under the previous Act) and $125 for an additional class (as calculated by the registered owner)
25
Scenario 3
Additional Renewal FeesThe Office is looking to add the ability to pay additional Nice class fees online at the same time as submitting the Nice Classification information
This should speed the process as the registered owner would not have to wait for an adjusted renewal fee notice to pay any outstanding fees
Note that the amount would not be calculated automatically as the final number of classes would not be finalized
26
Renewal process for registrations for which the goods or services have been grouped according to the classes of the Nice Classification system
27
Renewal Fees
Where goods or services of a registration are grouped and classed the registered owner must pay all of the fees set out in Items 14(a) or (b) of the Schedule to the Regulations
The fee is based on the number of classes in the registration at the time of renewal
28
Partial Renewal
29
Partial Renewal
The registration of a trademark may be renewed for some or all of the goods or services in respect of which the trademark is registered
If a registered owner requests the renewal of only some of the goods or services listed in the register for a registration (partial renewal) the registration will be renewed only for those goods and services listed in the renewal request
30
Partial Renewal - Online
A partial renewal can be submitted online only if the
bull Goods or services in respect of which the trademark is registered are grouped according to the classes of the Nice Classification
bull All the goods or services grouped in a class are being renewed and
bull the remaining goods or services are being deleted
31
Partial Renewal ndash Paper
If a partial renewal is not submitted online the Registrar will send a letter acknowledging receipt of the renewal fee
The particulars of the partial renewal will be available and the Registrar will issue a certificate of renewal only after the registration or previous renewal period has expired or the remaining goods or services not being renewed are deleted
32
Partial Renewal ndash Paper
Given the potential delay between submitting a partial renewal and receiving a certificate of renewal registered owners are strongly encouraged to either renew near the expiry of the registration or renewal period or delete the goods or services not being renewed at the time of the partial renewal
33
Partial Renewal
Note that renewing a registration and subsequently deleting some goods or services is not considered a partial renewal as the prescribed renewal fee is based on the number of classes in the registration at the time of renewal
34
35
Extensions of Time
Extensions of time
36
The Branch has been looking for ways to render the end-to-end examination process more efficient and timely
One of the ways to reduce pendency in examination is to amend the practice with respect to the granting extensions of time
Extensions of time
37
Automatic or unwarranted extensions of time slow down the registration process considerably
To put things in perspective in 2018 the Office granted more than 11000 requests for extension of time at the examination stage alone
Extensions of time
38
The practice notice on extensions of time was amended on January 17 to remove the first six-month extension following an examinerrsquos report that was available for practically any reason
Extensions of time
39
Going forward the Office will generally not grant an extension of time to file a response to an examinerrsquos report unless the applicant can demonstrate exceptional circumstances justifying why it is not yet possible to file a proper response
Extensions of time
40
In an effort to implement a smooth transition from the previous practice the practice of not granting an extension of time to reply to an examinerrsquos report unless exceptional circumstances exist will only apply to trademark applications for which an examinerrsquos report has been issued on or after the publication date of this amended practice notice
Extensions of time
41
As a result for applications for which an examinerrsquos report has issued prior to the publication date of January 17 the Office will generally grant the applicant one (1) extension of time of up to a maximum of six (6) months to file a response to an examiners report if the request is justified
Extensions of time
42
The following are examples of what could amount to an exceptional circumstance that would justify an extension of time
Extensions of time No change
43
1 Recent change in trademark agentThere has been a very recent change in the appointed trademark agent and the agent requires time to become familiar with the file
No change
Extensions of time
44
2 Circumstances beyond the control of the person concernedExamples include illness accident death bankruptcy or other serious and unforeseen circumstances
No change
Extensions of time
45
3 TransferThere is a request pending at the Office to record or register the transfer of an application or registered trademark and said transfer would overcome a confusion objection
No change
Extensions of time
46
4 OppositionA co-pending and confusing trademark is the subject of a pending opposition proceeding
Amended
Extensions of time
47
5 Section 45A registered trademark cited as confusing is subject to a pending section 45 proceeding
Amended
Extensions of time
48
6 Official markThe applicant is in the process of actively negotiating a consent from the holder of an official mark
Amended
Extensions of time
49
7 Division of a Protocol applicationThe applicant has filed a request for the division in respect of Canada of the international registration on which the original Protocol application is based and is waiting on the International Bureau for notification that a divisional international registration has been created
No change
Extensions of time
50
8 Respond to an objection which could lead to a refusal under paragraphs 37(1)(b) (c) or (d) of the ActThe applicant requires more time to consider the objection and file a proper response The applicant may request an extension of time for this reason only once in the prosecution of the application
New
Extensions of time
51
9 Compile evidence of distinctiveness under subsection 32(1) of the ActThe applicant is in the process of compiling the sufficient evidence required to show that the trademark was distinctive at the filing date of the application The applicant may request an extension of time for this reason only once in the prosecution of the application New
Fee for Extensions of time
52
The $125 fee to request an extension of time is only required where a person applies to extend the deadline or period of time that is fixed by the Act or prescribed by the Regulations
Fee for Extensions of time
53
Therefore the fee is not required to request an extension of time to respond to an examinerrsquos report as the period of time to respond is not fixed in either the Act or its Regulations
Fee for Extensions of time
54
The fee is required to request an extension of time where the applicant is considered to be in default of the prosecution of the application as the period of time to respond to a default isfixed in section 34 of the Regulations
55
Appointment of a Trademark Agent or an Associate Trademark Agent
The temporary appointment of an agent or associate agent for the purpose of grouping the goods or services of a trademark registration according to the Nice Classification may be done using the Group Goods or Services (Nice Classification) e-service on CIPOrsquos website by including the details of temporary appointment and subsequent revocation in the ldquoClosing detailsrdquo section
56
Temporary Appointment
The undersigned has been appointed under subsection 22(1) of the Trademarks Regulations by the applicant or registered owner as trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as trademark agent is revoked under section 23 of the Trademarks Regulations
57
Temporary Appointment
The undersigned has been appointed under subsection 22(3) of the Trademarks Regulations by the trademark agent that resides in Canada appointed on the following trademark applications and registrations as associate trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as associate agent is revoked under section 23 of the Trademarks Regulations and the appointed trademark agent will remain of record
58
Temporary Appointment
Suggested wording for a temporary appointment and subsequent revocation can also be found in the relevant Practice Notice on the CIPO website
59
Temporary Appointment
60
Appointment of Agent on Transfers
The Office has been receiving requests for transfers under section 48 of the Actin which it is unclear on behalf of whom the request is initiated (ie the transferee or the transferor)
61
Appointment of Agent on Transfers
In view of the requirements in the Regulations on representation and the appointment of trademark agents all requests for transfers under section 48 of the Act must clearly indicate whether the transferee is appointing the agent who submitted the request
62
Appointment of Agent on Transfers
In view of the evidentiary requirements to record or register a transfer on the request of a transferee all requests must indicate which party is requesting the transfer
63
Appointment of Agent on Transfers
Similarly because it is unclear on behalf of whom the request is initiated it is often unclear whether the transferee is appointing an agent to represent them in respect of that trademark application or registration
64
Appointment of Agent on Transfers
Without a new appointment of agent if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
When the statement required by the notice is provided the Nice Classification information will be assessed by an examiner
Note that it is not possible to provide Nice Classification information in one request in respect of more than one registration (contrary to section 4 of the Regulations)
9
Statement Reviewed
If the examiner determines that the Nice classification information is notacceptable a report will issue which
bull provides guidance as to the appropriate class for a given good or service and
bull Specifies the amount of any additional required fees
10
Unacceptable Statement
If the registered owner does not respond to this report the Registrar has the authority to make the final determination as to the proper Nice Classification information under subsection 441(4) of the Act
11
Unacceptable Statement
If the examiner determines that the Nice Classification information is acceptable a report will issue confirming the final classification of the goods or services together with a client proof sheet
12
Acceptable Classification
bull If any additional fees are required an adjusted renewal fee notice will be issued
bull These fees must be paid within two months of this notice
bull Failure to pay these fees will result in the expungement of the registration
13
Acceptable Classification
14
Pay Adjusted Renewal Fees Online
15
Pay Adjusted Renewal Fees Online
16
Pay Adjusted Renewal Fees Online
17
Pay Adjusted Renewal Fees Online
If following the issuance of a notice under subsection 441(1) of the Act the registered owner does not respond to the notice by providing the classes for the goods or services the Registrar will send a further notice under subsection 441(3) giving the registered owner 2 months to comply
18
Failure to Furnish
If following the issuance of a notice under subsection 441(3) of the Act the registered owner does not respond by providing the classes for the goods or services the registration may be expunged or not renewed
19
Failure to Furnish
While specificity of goods or services will aid in their classification the Registrar does not have the authority to require that any of the goods or services in the registration be amended to comply with specificity requirements in examination since these provisions are relevant to applications and not registrations
20
Authority to Request Amendment of Statements
21
Renewal Process(Goods or services not classed at renewal)
22
The Inadvisable Stepsto Renewal
bull The registration is renewed and the base fee for one class is paid using the online renewal service and
bull on the same day the goods or services are grouped according to the Nice Classification using the online service and
bull on the same day the fees for the additional Nice classes (as calculated by the registered owner) are submitted by paper
23
Scenario 1
bull The registration is renewed and the base fee for one class is paid using the online renewal service and
bull on the same day the fees for additional Nice classes (as calculated by the registered owner) are submitted by paper however
bull the goods or services have not been grouped and classed
24
Scenario 2
A request to renew is filed by paper together with $400 (renewal fee under the previous Act) and $125 for an additional class (as calculated by the registered owner)
25
Scenario 3
Additional Renewal FeesThe Office is looking to add the ability to pay additional Nice class fees online at the same time as submitting the Nice Classification information
This should speed the process as the registered owner would not have to wait for an adjusted renewal fee notice to pay any outstanding fees
Note that the amount would not be calculated automatically as the final number of classes would not be finalized
26
Renewal process for registrations for which the goods or services have been grouped according to the classes of the Nice Classification system
27
Renewal Fees
Where goods or services of a registration are grouped and classed the registered owner must pay all of the fees set out in Items 14(a) or (b) of the Schedule to the Regulations
The fee is based on the number of classes in the registration at the time of renewal
28
Partial Renewal
29
Partial Renewal
The registration of a trademark may be renewed for some or all of the goods or services in respect of which the trademark is registered
If a registered owner requests the renewal of only some of the goods or services listed in the register for a registration (partial renewal) the registration will be renewed only for those goods and services listed in the renewal request
30
Partial Renewal - Online
A partial renewal can be submitted online only if the
bull Goods or services in respect of which the trademark is registered are grouped according to the classes of the Nice Classification
bull All the goods or services grouped in a class are being renewed and
bull the remaining goods or services are being deleted
31
Partial Renewal ndash Paper
If a partial renewal is not submitted online the Registrar will send a letter acknowledging receipt of the renewal fee
The particulars of the partial renewal will be available and the Registrar will issue a certificate of renewal only after the registration or previous renewal period has expired or the remaining goods or services not being renewed are deleted
32
Partial Renewal ndash Paper
Given the potential delay between submitting a partial renewal and receiving a certificate of renewal registered owners are strongly encouraged to either renew near the expiry of the registration or renewal period or delete the goods or services not being renewed at the time of the partial renewal
33
Partial Renewal
Note that renewing a registration and subsequently deleting some goods or services is not considered a partial renewal as the prescribed renewal fee is based on the number of classes in the registration at the time of renewal
34
35
Extensions of Time
Extensions of time
36
The Branch has been looking for ways to render the end-to-end examination process more efficient and timely
One of the ways to reduce pendency in examination is to amend the practice with respect to the granting extensions of time
Extensions of time
37
Automatic or unwarranted extensions of time slow down the registration process considerably
To put things in perspective in 2018 the Office granted more than 11000 requests for extension of time at the examination stage alone
Extensions of time
38
The practice notice on extensions of time was amended on January 17 to remove the first six-month extension following an examinerrsquos report that was available for practically any reason
Extensions of time
39
Going forward the Office will generally not grant an extension of time to file a response to an examinerrsquos report unless the applicant can demonstrate exceptional circumstances justifying why it is not yet possible to file a proper response
Extensions of time
40
In an effort to implement a smooth transition from the previous practice the practice of not granting an extension of time to reply to an examinerrsquos report unless exceptional circumstances exist will only apply to trademark applications for which an examinerrsquos report has been issued on or after the publication date of this amended practice notice
Extensions of time
41
As a result for applications for which an examinerrsquos report has issued prior to the publication date of January 17 the Office will generally grant the applicant one (1) extension of time of up to a maximum of six (6) months to file a response to an examiners report if the request is justified
Extensions of time
42
The following are examples of what could amount to an exceptional circumstance that would justify an extension of time
Extensions of time No change
43
1 Recent change in trademark agentThere has been a very recent change in the appointed trademark agent and the agent requires time to become familiar with the file
No change
Extensions of time
44
2 Circumstances beyond the control of the person concernedExamples include illness accident death bankruptcy or other serious and unforeseen circumstances
No change
Extensions of time
45
3 TransferThere is a request pending at the Office to record or register the transfer of an application or registered trademark and said transfer would overcome a confusion objection
No change
Extensions of time
46
4 OppositionA co-pending and confusing trademark is the subject of a pending opposition proceeding
Amended
Extensions of time
47
5 Section 45A registered trademark cited as confusing is subject to a pending section 45 proceeding
Amended
Extensions of time
48
6 Official markThe applicant is in the process of actively negotiating a consent from the holder of an official mark
Amended
Extensions of time
49
7 Division of a Protocol applicationThe applicant has filed a request for the division in respect of Canada of the international registration on which the original Protocol application is based and is waiting on the International Bureau for notification that a divisional international registration has been created
No change
Extensions of time
50
8 Respond to an objection which could lead to a refusal under paragraphs 37(1)(b) (c) or (d) of the ActThe applicant requires more time to consider the objection and file a proper response The applicant may request an extension of time for this reason only once in the prosecution of the application
New
Extensions of time
51
9 Compile evidence of distinctiveness under subsection 32(1) of the ActThe applicant is in the process of compiling the sufficient evidence required to show that the trademark was distinctive at the filing date of the application The applicant may request an extension of time for this reason only once in the prosecution of the application New
Fee for Extensions of time
52
The $125 fee to request an extension of time is only required where a person applies to extend the deadline or period of time that is fixed by the Act or prescribed by the Regulations
Fee for Extensions of time
53
Therefore the fee is not required to request an extension of time to respond to an examinerrsquos report as the period of time to respond is not fixed in either the Act or its Regulations
Fee for Extensions of time
54
The fee is required to request an extension of time where the applicant is considered to be in default of the prosecution of the application as the period of time to respond to a default isfixed in section 34 of the Regulations
55
Appointment of a Trademark Agent or an Associate Trademark Agent
The temporary appointment of an agent or associate agent for the purpose of grouping the goods or services of a trademark registration according to the Nice Classification may be done using the Group Goods or Services (Nice Classification) e-service on CIPOrsquos website by including the details of temporary appointment and subsequent revocation in the ldquoClosing detailsrdquo section
56
Temporary Appointment
The undersigned has been appointed under subsection 22(1) of the Trademarks Regulations by the applicant or registered owner as trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as trademark agent is revoked under section 23 of the Trademarks Regulations
57
Temporary Appointment
The undersigned has been appointed under subsection 22(3) of the Trademarks Regulations by the trademark agent that resides in Canada appointed on the following trademark applications and registrations as associate trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as associate agent is revoked under section 23 of the Trademarks Regulations and the appointed trademark agent will remain of record
58
Temporary Appointment
Suggested wording for a temporary appointment and subsequent revocation can also be found in the relevant Practice Notice on the CIPO website
59
Temporary Appointment
60
Appointment of Agent on Transfers
The Office has been receiving requests for transfers under section 48 of the Actin which it is unclear on behalf of whom the request is initiated (ie the transferee or the transferor)
61
Appointment of Agent on Transfers
In view of the requirements in the Regulations on representation and the appointment of trademark agents all requests for transfers under section 48 of the Act must clearly indicate whether the transferee is appointing the agent who submitted the request
62
Appointment of Agent on Transfers
In view of the evidentiary requirements to record or register a transfer on the request of a transferee all requests must indicate which party is requesting the transfer
63
Appointment of Agent on Transfers
Similarly because it is unclear on behalf of whom the request is initiated it is often unclear whether the transferee is appointing an agent to represent them in respect of that trademark application or registration
64
Appointment of Agent on Transfers
Without a new appointment of agent if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
If the examiner determines that the Nice classification information is notacceptable a report will issue which
bull provides guidance as to the appropriate class for a given good or service and
bull Specifies the amount of any additional required fees
10
Unacceptable Statement
If the registered owner does not respond to this report the Registrar has the authority to make the final determination as to the proper Nice Classification information under subsection 441(4) of the Act
11
Unacceptable Statement
If the examiner determines that the Nice Classification information is acceptable a report will issue confirming the final classification of the goods or services together with a client proof sheet
12
Acceptable Classification
bull If any additional fees are required an adjusted renewal fee notice will be issued
bull These fees must be paid within two months of this notice
bull Failure to pay these fees will result in the expungement of the registration
13
Acceptable Classification
14
Pay Adjusted Renewal Fees Online
15
Pay Adjusted Renewal Fees Online
16
Pay Adjusted Renewal Fees Online
17
Pay Adjusted Renewal Fees Online
If following the issuance of a notice under subsection 441(1) of the Act the registered owner does not respond to the notice by providing the classes for the goods or services the Registrar will send a further notice under subsection 441(3) giving the registered owner 2 months to comply
18
Failure to Furnish
If following the issuance of a notice under subsection 441(3) of the Act the registered owner does not respond by providing the classes for the goods or services the registration may be expunged or not renewed
19
Failure to Furnish
While specificity of goods or services will aid in their classification the Registrar does not have the authority to require that any of the goods or services in the registration be amended to comply with specificity requirements in examination since these provisions are relevant to applications and not registrations
20
Authority to Request Amendment of Statements
21
Renewal Process(Goods or services not classed at renewal)
22
The Inadvisable Stepsto Renewal
bull The registration is renewed and the base fee for one class is paid using the online renewal service and
bull on the same day the goods or services are grouped according to the Nice Classification using the online service and
bull on the same day the fees for the additional Nice classes (as calculated by the registered owner) are submitted by paper
23
Scenario 1
bull The registration is renewed and the base fee for one class is paid using the online renewal service and
bull on the same day the fees for additional Nice classes (as calculated by the registered owner) are submitted by paper however
bull the goods or services have not been grouped and classed
24
Scenario 2
A request to renew is filed by paper together with $400 (renewal fee under the previous Act) and $125 for an additional class (as calculated by the registered owner)
25
Scenario 3
Additional Renewal FeesThe Office is looking to add the ability to pay additional Nice class fees online at the same time as submitting the Nice Classification information
This should speed the process as the registered owner would not have to wait for an adjusted renewal fee notice to pay any outstanding fees
Note that the amount would not be calculated automatically as the final number of classes would not be finalized
26
Renewal process for registrations for which the goods or services have been grouped according to the classes of the Nice Classification system
27
Renewal Fees
Where goods or services of a registration are grouped and classed the registered owner must pay all of the fees set out in Items 14(a) or (b) of the Schedule to the Regulations
The fee is based on the number of classes in the registration at the time of renewal
28
Partial Renewal
29
Partial Renewal
The registration of a trademark may be renewed for some or all of the goods or services in respect of which the trademark is registered
If a registered owner requests the renewal of only some of the goods or services listed in the register for a registration (partial renewal) the registration will be renewed only for those goods and services listed in the renewal request
30
Partial Renewal - Online
A partial renewal can be submitted online only if the
bull Goods or services in respect of which the trademark is registered are grouped according to the classes of the Nice Classification
bull All the goods or services grouped in a class are being renewed and
bull the remaining goods or services are being deleted
31
Partial Renewal ndash Paper
If a partial renewal is not submitted online the Registrar will send a letter acknowledging receipt of the renewal fee
The particulars of the partial renewal will be available and the Registrar will issue a certificate of renewal only after the registration or previous renewal period has expired or the remaining goods or services not being renewed are deleted
32
Partial Renewal ndash Paper
Given the potential delay between submitting a partial renewal and receiving a certificate of renewal registered owners are strongly encouraged to either renew near the expiry of the registration or renewal period or delete the goods or services not being renewed at the time of the partial renewal
33
Partial Renewal
Note that renewing a registration and subsequently deleting some goods or services is not considered a partial renewal as the prescribed renewal fee is based on the number of classes in the registration at the time of renewal
34
35
Extensions of Time
Extensions of time
36
The Branch has been looking for ways to render the end-to-end examination process more efficient and timely
One of the ways to reduce pendency in examination is to amend the practice with respect to the granting extensions of time
Extensions of time
37
Automatic or unwarranted extensions of time slow down the registration process considerably
To put things in perspective in 2018 the Office granted more than 11000 requests for extension of time at the examination stage alone
Extensions of time
38
The practice notice on extensions of time was amended on January 17 to remove the first six-month extension following an examinerrsquos report that was available for practically any reason
Extensions of time
39
Going forward the Office will generally not grant an extension of time to file a response to an examinerrsquos report unless the applicant can demonstrate exceptional circumstances justifying why it is not yet possible to file a proper response
Extensions of time
40
In an effort to implement a smooth transition from the previous practice the practice of not granting an extension of time to reply to an examinerrsquos report unless exceptional circumstances exist will only apply to trademark applications for which an examinerrsquos report has been issued on or after the publication date of this amended practice notice
Extensions of time
41
As a result for applications for which an examinerrsquos report has issued prior to the publication date of January 17 the Office will generally grant the applicant one (1) extension of time of up to a maximum of six (6) months to file a response to an examiners report if the request is justified
Extensions of time
42
The following are examples of what could amount to an exceptional circumstance that would justify an extension of time
Extensions of time No change
43
1 Recent change in trademark agentThere has been a very recent change in the appointed trademark agent and the agent requires time to become familiar with the file
No change
Extensions of time
44
2 Circumstances beyond the control of the person concernedExamples include illness accident death bankruptcy or other serious and unforeseen circumstances
No change
Extensions of time
45
3 TransferThere is a request pending at the Office to record or register the transfer of an application or registered trademark and said transfer would overcome a confusion objection
No change
Extensions of time
46
4 OppositionA co-pending and confusing trademark is the subject of a pending opposition proceeding
Amended
Extensions of time
47
5 Section 45A registered trademark cited as confusing is subject to a pending section 45 proceeding
Amended
Extensions of time
48
6 Official markThe applicant is in the process of actively negotiating a consent from the holder of an official mark
Amended
Extensions of time
49
7 Division of a Protocol applicationThe applicant has filed a request for the division in respect of Canada of the international registration on which the original Protocol application is based and is waiting on the International Bureau for notification that a divisional international registration has been created
No change
Extensions of time
50
8 Respond to an objection which could lead to a refusal under paragraphs 37(1)(b) (c) or (d) of the ActThe applicant requires more time to consider the objection and file a proper response The applicant may request an extension of time for this reason only once in the prosecution of the application
New
Extensions of time
51
9 Compile evidence of distinctiveness under subsection 32(1) of the ActThe applicant is in the process of compiling the sufficient evidence required to show that the trademark was distinctive at the filing date of the application The applicant may request an extension of time for this reason only once in the prosecution of the application New
Fee for Extensions of time
52
The $125 fee to request an extension of time is only required where a person applies to extend the deadline or period of time that is fixed by the Act or prescribed by the Regulations
Fee for Extensions of time
53
Therefore the fee is not required to request an extension of time to respond to an examinerrsquos report as the period of time to respond is not fixed in either the Act or its Regulations
Fee for Extensions of time
54
The fee is required to request an extension of time where the applicant is considered to be in default of the prosecution of the application as the period of time to respond to a default isfixed in section 34 of the Regulations
55
Appointment of a Trademark Agent or an Associate Trademark Agent
The temporary appointment of an agent or associate agent for the purpose of grouping the goods or services of a trademark registration according to the Nice Classification may be done using the Group Goods or Services (Nice Classification) e-service on CIPOrsquos website by including the details of temporary appointment and subsequent revocation in the ldquoClosing detailsrdquo section
56
Temporary Appointment
The undersigned has been appointed under subsection 22(1) of the Trademarks Regulations by the applicant or registered owner as trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as trademark agent is revoked under section 23 of the Trademarks Regulations
57
Temporary Appointment
The undersigned has been appointed under subsection 22(3) of the Trademarks Regulations by the trademark agent that resides in Canada appointed on the following trademark applications and registrations as associate trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as associate agent is revoked under section 23 of the Trademarks Regulations and the appointed trademark agent will remain of record
58
Temporary Appointment
Suggested wording for a temporary appointment and subsequent revocation can also be found in the relevant Practice Notice on the CIPO website
59
Temporary Appointment
60
Appointment of Agent on Transfers
The Office has been receiving requests for transfers under section 48 of the Actin which it is unclear on behalf of whom the request is initiated (ie the transferee or the transferor)
61
Appointment of Agent on Transfers
In view of the requirements in the Regulations on representation and the appointment of trademark agents all requests for transfers under section 48 of the Act must clearly indicate whether the transferee is appointing the agent who submitted the request
62
Appointment of Agent on Transfers
In view of the evidentiary requirements to record or register a transfer on the request of a transferee all requests must indicate which party is requesting the transfer
63
Appointment of Agent on Transfers
Similarly because it is unclear on behalf of whom the request is initiated it is often unclear whether the transferee is appointing an agent to represent them in respect of that trademark application or registration
64
Appointment of Agent on Transfers
Without a new appointment of agent if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
If the registered owner does not respond to this report the Registrar has the authority to make the final determination as to the proper Nice Classification information under subsection 441(4) of the Act
11
Unacceptable Statement
If the examiner determines that the Nice Classification information is acceptable a report will issue confirming the final classification of the goods or services together with a client proof sheet
12
Acceptable Classification
bull If any additional fees are required an adjusted renewal fee notice will be issued
bull These fees must be paid within two months of this notice
bull Failure to pay these fees will result in the expungement of the registration
13
Acceptable Classification
14
Pay Adjusted Renewal Fees Online
15
Pay Adjusted Renewal Fees Online
16
Pay Adjusted Renewal Fees Online
17
Pay Adjusted Renewal Fees Online
If following the issuance of a notice under subsection 441(1) of the Act the registered owner does not respond to the notice by providing the classes for the goods or services the Registrar will send a further notice under subsection 441(3) giving the registered owner 2 months to comply
18
Failure to Furnish
If following the issuance of a notice under subsection 441(3) of the Act the registered owner does not respond by providing the classes for the goods or services the registration may be expunged or not renewed
19
Failure to Furnish
While specificity of goods or services will aid in their classification the Registrar does not have the authority to require that any of the goods or services in the registration be amended to comply with specificity requirements in examination since these provisions are relevant to applications and not registrations
20
Authority to Request Amendment of Statements
21
Renewal Process(Goods or services not classed at renewal)
22
The Inadvisable Stepsto Renewal
bull The registration is renewed and the base fee for one class is paid using the online renewal service and
bull on the same day the goods or services are grouped according to the Nice Classification using the online service and
bull on the same day the fees for the additional Nice classes (as calculated by the registered owner) are submitted by paper
23
Scenario 1
bull The registration is renewed and the base fee for one class is paid using the online renewal service and
bull on the same day the fees for additional Nice classes (as calculated by the registered owner) are submitted by paper however
bull the goods or services have not been grouped and classed
24
Scenario 2
A request to renew is filed by paper together with $400 (renewal fee under the previous Act) and $125 for an additional class (as calculated by the registered owner)
25
Scenario 3
Additional Renewal FeesThe Office is looking to add the ability to pay additional Nice class fees online at the same time as submitting the Nice Classification information
This should speed the process as the registered owner would not have to wait for an adjusted renewal fee notice to pay any outstanding fees
Note that the amount would not be calculated automatically as the final number of classes would not be finalized
26
Renewal process for registrations for which the goods or services have been grouped according to the classes of the Nice Classification system
27
Renewal Fees
Where goods or services of a registration are grouped and classed the registered owner must pay all of the fees set out in Items 14(a) or (b) of the Schedule to the Regulations
The fee is based on the number of classes in the registration at the time of renewal
28
Partial Renewal
29
Partial Renewal
The registration of a trademark may be renewed for some or all of the goods or services in respect of which the trademark is registered
If a registered owner requests the renewal of only some of the goods or services listed in the register for a registration (partial renewal) the registration will be renewed only for those goods and services listed in the renewal request
30
Partial Renewal - Online
A partial renewal can be submitted online only if the
bull Goods or services in respect of which the trademark is registered are grouped according to the classes of the Nice Classification
bull All the goods or services grouped in a class are being renewed and
bull the remaining goods or services are being deleted
31
Partial Renewal ndash Paper
If a partial renewal is not submitted online the Registrar will send a letter acknowledging receipt of the renewal fee
The particulars of the partial renewal will be available and the Registrar will issue a certificate of renewal only after the registration or previous renewal period has expired or the remaining goods or services not being renewed are deleted
32
Partial Renewal ndash Paper
Given the potential delay between submitting a partial renewal and receiving a certificate of renewal registered owners are strongly encouraged to either renew near the expiry of the registration or renewal period or delete the goods or services not being renewed at the time of the partial renewal
33
Partial Renewal
Note that renewing a registration and subsequently deleting some goods or services is not considered a partial renewal as the prescribed renewal fee is based on the number of classes in the registration at the time of renewal
34
35
Extensions of Time
Extensions of time
36
The Branch has been looking for ways to render the end-to-end examination process more efficient and timely
One of the ways to reduce pendency in examination is to amend the practice with respect to the granting extensions of time
Extensions of time
37
Automatic or unwarranted extensions of time slow down the registration process considerably
To put things in perspective in 2018 the Office granted more than 11000 requests for extension of time at the examination stage alone
Extensions of time
38
The practice notice on extensions of time was amended on January 17 to remove the first six-month extension following an examinerrsquos report that was available for practically any reason
Extensions of time
39
Going forward the Office will generally not grant an extension of time to file a response to an examinerrsquos report unless the applicant can demonstrate exceptional circumstances justifying why it is not yet possible to file a proper response
Extensions of time
40
In an effort to implement a smooth transition from the previous practice the practice of not granting an extension of time to reply to an examinerrsquos report unless exceptional circumstances exist will only apply to trademark applications for which an examinerrsquos report has been issued on or after the publication date of this amended practice notice
Extensions of time
41
As a result for applications for which an examinerrsquos report has issued prior to the publication date of January 17 the Office will generally grant the applicant one (1) extension of time of up to a maximum of six (6) months to file a response to an examiners report if the request is justified
Extensions of time
42
The following are examples of what could amount to an exceptional circumstance that would justify an extension of time
Extensions of time No change
43
1 Recent change in trademark agentThere has been a very recent change in the appointed trademark agent and the agent requires time to become familiar with the file
No change
Extensions of time
44
2 Circumstances beyond the control of the person concernedExamples include illness accident death bankruptcy or other serious and unforeseen circumstances
No change
Extensions of time
45
3 TransferThere is a request pending at the Office to record or register the transfer of an application or registered trademark and said transfer would overcome a confusion objection
No change
Extensions of time
46
4 OppositionA co-pending and confusing trademark is the subject of a pending opposition proceeding
Amended
Extensions of time
47
5 Section 45A registered trademark cited as confusing is subject to a pending section 45 proceeding
Amended
Extensions of time
48
6 Official markThe applicant is in the process of actively negotiating a consent from the holder of an official mark
Amended
Extensions of time
49
7 Division of a Protocol applicationThe applicant has filed a request for the division in respect of Canada of the international registration on which the original Protocol application is based and is waiting on the International Bureau for notification that a divisional international registration has been created
No change
Extensions of time
50
8 Respond to an objection which could lead to a refusal under paragraphs 37(1)(b) (c) or (d) of the ActThe applicant requires more time to consider the objection and file a proper response The applicant may request an extension of time for this reason only once in the prosecution of the application
New
Extensions of time
51
9 Compile evidence of distinctiveness under subsection 32(1) of the ActThe applicant is in the process of compiling the sufficient evidence required to show that the trademark was distinctive at the filing date of the application The applicant may request an extension of time for this reason only once in the prosecution of the application New
Fee for Extensions of time
52
The $125 fee to request an extension of time is only required where a person applies to extend the deadline or period of time that is fixed by the Act or prescribed by the Regulations
Fee for Extensions of time
53
Therefore the fee is not required to request an extension of time to respond to an examinerrsquos report as the period of time to respond is not fixed in either the Act or its Regulations
Fee for Extensions of time
54
The fee is required to request an extension of time where the applicant is considered to be in default of the prosecution of the application as the period of time to respond to a default isfixed in section 34 of the Regulations
55
Appointment of a Trademark Agent or an Associate Trademark Agent
The temporary appointment of an agent or associate agent for the purpose of grouping the goods or services of a trademark registration according to the Nice Classification may be done using the Group Goods or Services (Nice Classification) e-service on CIPOrsquos website by including the details of temporary appointment and subsequent revocation in the ldquoClosing detailsrdquo section
56
Temporary Appointment
The undersigned has been appointed under subsection 22(1) of the Trademarks Regulations by the applicant or registered owner as trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as trademark agent is revoked under section 23 of the Trademarks Regulations
57
Temporary Appointment
The undersigned has been appointed under subsection 22(3) of the Trademarks Regulations by the trademark agent that resides in Canada appointed on the following trademark applications and registrations as associate trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as associate agent is revoked under section 23 of the Trademarks Regulations and the appointed trademark agent will remain of record
58
Temporary Appointment
Suggested wording for a temporary appointment and subsequent revocation can also be found in the relevant Practice Notice on the CIPO website
59
Temporary Appointment
60
Appointment of Agent on Transfers
The Office has been receiving requests for transfers under section 48 of the Actin which it is unclear on behalf of whom the request is initiated (ie the transferee or the transferor)
61
Appointment of Agent on Transfers
In view of the requirements in the Regulations on representation and the appointment of trademark agents all requests for transfers under section 48 of the Act must clearly indicate whether the transferee is appointing the agent who submitted the request
62
Appointment of Agent on Transfers
In view of the evidentiary requirements to record or register a transfer on the request of a transferee all requests must indicate which party is requesting the transfer
63
Appointment of Agent on Transfers
Similarly because it is unclear on behalf of whom the request is initiated it is often unclear whether the transferee is appointing an agent to represent them in respect of that trademark application or registration
64
Appointment of Agent on Transfers
Without a new appointment of agent if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
If the examiner determines that the Nice Classification information is acceptable a report will issue confirming the final classification of the goods or services together with a client proof sheet
12
Acceptable Classification
bull If any additional fees are required an adjusted renewal fee notice will be issued
bull These fees must be paid within two months of this notice
bull Failure to pay these fees will result in the expungement of the registration
13
Acceptable Classification
14
Pay Adjusted Renewal Fees Online
15
Pay Adjusted Renewal Fees Online
16
Pay Adjusted Renewal Fees Online
17
Pay Adjusted Renewal Fees Online
If following the issuance of a notice under subsection 441(1) of the Act the registered owner does not respond to the notice by providing the classes for the goods or services the Registrar will send a further notice under subsection 441(3) giving the registered owner 2 months to comply
18
Failure to Furnish
If following the issuance of a notice under subsection 441(3) of the Act the registered owner does not respond by providing the classes for the goods or services the registration may be expunged or not renewed
19
Failure to Furnish
While specificity of goods or services will aid in their classification the Registrar does not have the authority to require that any of the goods or services in the registration be amended to comply with specificity requirements in examination since these provisions are relevant to applications and not registrations
20
Authority to Request Amendment of Statements
21
Renewal Process(Goods or services not classed at renewal)
22
The Inadvisable Stepsto Renewal
bull The registration is renewed and the base fee for one class is paid using the online renewal service and
bull on the same day the goods or services are grouped according to the Nice Classification using the online service and
bull on the same day the fees for the additional Nice classes (as calculated by the registered owner) are submitted by paper
23
Scenario 1
bull The registration is renewed and the base fee for one class is paid using the online renewal service and
bull on the same day the fees for additional Nice classes (as calculated by the registered owner) are submitted by paper however
bull the goods or services have not been grouped and classed
24
Scenario 2
A request to renew is filed by paper together with $400 (renewal fee under the previous Act) and $125 for an additional class (as calculated by the registered owner)
25
Scenario 3
Additional Renewal FeesThe Office is looking to add the ability to pay additional Nice class fees online at the same time as submitting the Nice Classification information
This should speed the process as the registered owner would not have to wait for an adjusted renewal fee notice to pay any outstanding fees
Note that the amount would not be calculated automatically as the final number of classes would not be finalized
26
Renewal process for registrations for which the goods or services have been grouped according to the classes of the Nice Classification system
27
Renewal Fees
Where goods or services of a registration are grouped and classed the registered owner must pay all of the fees set out in Items 14(a) or (b) of the Schedule to the Regulations
The fee is based on the number of classes in the registration at the time of renewal
28
Partial Renewal
29
Partial Renewal
The registration of a trademark may be renewed for some or all of the goods or services in respect of which the trademark is registered
If a registered owner requests the renewal of only some of the goods or services listed in the register for a registration (partial renewal) the registration will be renewed only for those goods and services listed in the renewal request
30
Partial Renewal - Online
A partial renewal can be submitted online only if the
bull Goods or services in respect of which the trademark is registered are grouped according to the classes of the Nice Classification
bull All the goods or services grouped in a class are being renewed and
bull the remaining goods or services are being deleted
31
Partial Renewal ndash Paper
If a partial renewal is not submitted online the Registrar will send a letter acknowledging receipt of the renewal fee
The particulars of the partial renewal will be available and the Registrar will issue a certificate of renewal only after the registration or previous renewal period has expired or the remaining goods or services not being renewed are deleted
32
Partial Renewal ndash Paper
Given the potential delay between submitting a partial renewal and receiving a certificate of renewal registered owners are strongly encouraged to either renew near the expiry of the registration or renewal period or delete the goods or services not being renewed at the time of the partial renewal
33
Partial Renewal
Note that renewing a registration and subsequently deleting some goods or services is not considered a partial renewal as the prescribed renewal fee is based on the number of classes in the registration at the time of renewal
34
35
Extensions of Time
Extensions of time
36
The Branch has been looking for ways to render the end-to-end examination process more efficient and timely
One of the ways to reduce pendency in examination is to amend the practice with respect to the granting extensions of time
Extensions of time
37
Automatic or unwarranted extensions of time slow down the registration process considerably
To put things in perspective in 2018 the Office granted more than 11000 requests for extension of time at the examination stage alone
Extensions of time
38
The practice notice on extensions of time was amended on January 17 to remove the first six-month extension following an examinerrsquos report that was available for practically any reason
Extensions of time
39
Going forward the Office will generally not grant an extension of time to file a response to an examinerrsquos report unless the applicant can demonstrate exceptional circumstances justifying why it is not yet possible to file a proper response
Extensions of time
40
In an effort to implement a smooth transition from the previous practice the practice of not granting an extension of time to reply to an examinerrsquos report unless exceptional circumstances exist will only apply to trademark applications for which an examinerrsquos report has been issued on or after the publication date of this amended practice notice
Extensions of time
41
As a result for applications for which an examinerrsquos report has issued prior to the publication date of January 17 the Office will generally grant the applicant one (1) extension of time of up to a maximum of six (6) months to file a response to an examiners report if the request is justified
Extensions of time
42
The following are examples of what could amount to an exceptional circumstance that would justify an extension of time
Extensions of time No change
43
1 Recent change in trademark agentThere has been a very recent change in the appointed trademark agent and the agent requires time to become familiar with the file
No change
Extensions of time
44
2 Circumstances beyond the control of the person concernedExamples include illness accident death bankruptcy or other serious and unforeseen circumstances
No change
Extensions of time
45
3 TransferThere is a request pending at the Office to record or register the transfer of an application or registered trademark and said transfer would overcome a confusion objection
No change
Extensions of time
46
4 OppositionA co-pending and confusing trademark is the subject of a pending opposition proceeding
Amended
Extensions of time
47
5 Section 45A registered trademark cited as confusing is subject to a pending section 45 proceeding
Amended
Extensions of time
48
6 Official markThe applicant is in the process of actively negotiating a consent from the holder of an official mark
Amended
Extensions of time
49
7 Division of a Protocol applicationThe applicant has filed a request for the division in respect of Canada of the international registration on which the original Protocol application is based and is waiting on the International Bureau for notification that a divisional international registration has been created
No change
Extensions of time
50
8 Respond to an objection which could lead to a refusal under paragraphs 37(1)(b) (c) or (d) of the ActThe applicant requires more time to consider the objection and file a proper response The applicant may request an extension of time for this reason only once in the prosecution of the application
New
Extensions of time
51
9 Compile evidence of distinctiveness under subsection 32(1) of the ActThe applicant is in the process of compiling the sufficient evidence required to show that the trademark was distinctive at the filing date of the application The applicant may request an extension of time for this reason only once in the prosecution of the application New
Fee for Extensions of time
52
The $125 fee to request an extension of time is only required where a person applies to extend the deadline or period of time that is fixed by the Act or prescribed by the Regulations
Fee for Extensions of time
53
Therefore the fee is not required to request an extension of time to respond to an examinerrsquos report as the period of time to respond is not fixed in either the Act or its Regulations
Fee for Extensions of time
54
The fee is required to request an extension of time where the applicant is considered to be in default of the prosecution of the application as the period of time to respond to a default isfixed in section 34 of the Regulations
55
Appointment of a Trademark Agent or an Associate Trademark Agent
The temporary appointment of an agent or associate agent for the purpose of grouping the goods or services of a trademark registration according to the Nice Classification may be done using the Group Goods or Services (Nice Classification) e-service on CIPOrsquos website by including the details of temporary appointment and subsequent revocation in the ldquoClosing detailsrdquo section
56
Temporary Appointment
The undersigned has been appointed under subsection 22(1) of the Trademarks Regulations by the applicant or registered owner as trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as trademark agent is revoked under section 23 of the Trademarks Regulations
57
Temporary Appointment
The undersigned has been appointed under subsection 22(3) of the Trademarks Regulations by the trademark agent that resides in Canada appointed on the following trademark applications and registrations as associate trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as associate agent is revoked under section 23 of the Trademarks Regulations and the appointed trademark agent will remain of record
58
Temporary Appointment
Suggested wording for a temporary appointment and subsequent revocation can also be found in the relevant Practice Notice on the CIPO website
59
Temporary Appointment
60
Appointment of Agent on Transfers
The Office has been receiving requests for transfers under section 48 of the Actin which it is unclear on behalf of whom the request is initiated (ie the transferee or the transferor)
61
Appointment of Agent on Transfers
In view of the requirements in the Regulations on representation and the appointment of trademark agents all requests for transfers under section 48 of the Act must clearly indicate whether the transferee is appointing the agent who submitted the request
62
Appointment of Agent on Transfers
In view of the evidentiary requirements to record or register a transfer on the request of a transferee all requests must indicate which party is requesting the transfer
63
Appointment of Agent on Transfers
Similarly because it is unclear on behalf of whom the request is initiated it is often unclear whether the transferee is appointing an agent to represent them in respect of that trademark application or registration
64
Appointment of Agent on Transfers
Without a new appointment of agent if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
bull If any additional fees are required an adjusted renewal fee notice will be issued
bull These fees must be paid within two months of this notice
bull Failure to pay these fees will result in the expungement of the registration
13
Acceptable Classification
14
Pay Adjusted Renewal Fees Online
15
Pay Adjusted Renewal Fees Online
16
Pay Adjusted Renewal Fees Online
17
Pay Adjusted Renewal Fees Online
If following the issuance of a notice under subsection 441(1) of the Act the registered owner does not respond to the notice by providing the classes for the goods or services the Registrar will send a further notice under subsection 441(3) giving the registered owner 2 months to comply
18
Failure to Furnish
If following the issuance of a notice under subsection 441(3) of the Act the registered owner does not respond by providing the classes for the goods or services the registration may be expunged or not renewed
19
Failure to Furnish
While specificity of goods or services will aid in their classification the Registrar does not have the authority to require that any of the goods or services in the registration be amended to comply with specificity requirements in examination since these provisions are relevant to applications and not registrations
20
Authority to Request Amendment of Statements
21
Renewal Process(Goods or services not classed at renewal)
22
The Inadvisable Stepsto Renewal
bull The registration is renewed and the base fee for one class is paid using the online renewal service and
bull on the same day the goods or services are grouped according to the Nice Classification using the online service and
bull on the same day the fees for the additional Nice classes (as calculated by the registered owner) are submitted by paper
23
Scenario 1
bull The registration is renewed and the base fee for one class is paid using the online renewal service and
bull on the same day the fees for additional Nice classes (as calculated by the registered owner) are submitted by paper however
bull the goods or services have not been grouped and classed
24
Scenario 2
A request to renew is filed by paper together with $400 (renewal fee under the previous Act) and $125 for an additional class (as calculated by the registered owner)
25
Scenario 3
Additional Renewal FeesThe Office is looking to add the ability to pay additional Nice class fees online at the same time as submitting the Nice Classification information
This should speed the process as the registered owner would not have to wait for an adjusted renewal fee notice to pay any outstanding fees
Note that the amount would not be calculated automatically as the final number of classes would not be finalized
26
Renewal process for registrations for which the goods or services have been grouped according to the classes of the Nice Classification system
27
Renewal Fees
Where goods or services of a registration are grouped and classed the registered owner must pay all of the fees set out in Items 14(a) or (b) of the Schedule to the Regulations
The fee is based on the number of classes in the registration at the time of renewal
28
Partial Renewal
29
Partial Renewal
The registration of a trademark may be renewed for some or all of the goods or services in respect of which the trademark is registered
If a registered owner requests the renewal of only some of the goods or services listed in the register for a registration (partial renewal) the registration will be renewed only for those goods and services listed in the renewal request
30
Partial Renewal - Online
A partial renewal can be submitted online only if the
bull Goods or services in respect of which the trademark is registered are grouped according to the classes of the Nice Classification
bull All the goods or services grouped in a class are being renewed and
bull the remaining goods or services are being deleted
31
Partial Renewal ndash Paper
If a partial renewal is not submitted online the Registrar will send a letter acknowledging receipt of the renewal fee
The particulars of the partial renewal will be available and the Registrar will issue a certificate of renewal only after the registration or previous renewal period has expired or the remaining goods or services not being renewed are deleted
32
Partial Renewal ndash Paper
Given the potential delay between submitting a partial renewal and receiving a certificate of renewal registered owners are strongly encouraged to either renew near the expiry of the registration or renewal period or delete the goods or services not being renewed at the time of the partial renewal
33
Partial Renewal
Note that renewing a registration and subsequently deleting some goods or services is not considered a partial renewal as the prescribed renewal fee is based on the number of classes in the registration at the time of renewal
34
35
Extensions of Time
Extensions of time
36
The Branch has been looking for ways to render the end-to-end examination process more efficient and timely
One of the ways to reduce pendency in examination is to amend the practice with respect to the granting extensions of time
Extensions of time
37
Automatic or unwarranted extensions of time slow down the registration process considerably
To put things in perspective in 2018 the Office granted more than 11000 requests for extension of time at the examination stage alone
Extensions of time
38
The practice notice on extensions of time was amended on January 17 to remove the first six-month extension following an examinerrsquos report that was available for practically any reason
Extensions of time
39
Going forward the Office will generally not grant an extension of time to file a response to an examinerrsquos report unless the applicant can demonstrate exceptional circumstances justifying why it is not yet possible to file a proper response
Extensions of time
40
In an effort to implement a smooth transition from the previous practice the practice of not granting an extension of time to reply to an examinerrsquos report unless exceptional circumstances exist will only apply to trademark applications for which an examinerrsquos report has been issued on or after the publication date of this amended practice notice
Extensions of time
41
As a result for applications for which an examinerrsquos report has issued prior to the publication date of January 17 the Office will generally grant the applicant one (1) extension of time of up to a maximum of six (6) months to file a response to an examiners report if the request is justified
Extensions of time
42
The following are examples of what could amount to an exceptional circumstance that would justify an extension of time
Extensions of time No change
43
1 Recent change in trademark agentThere has been a very recent change in the appointed trademark agent and the agent requires time to become familiar with the file
No change
Extensions of time
44
2 Circumstances beyond the control of the person concernedExamples include illness accident death bankruptcy or other serious and unforeseen circumstances
No change
Extensions of time
45
3 TransferThere is a request pending at the Office to record or register the transfer of an application or registered trademark and said transfer would overcome a confusion objection
No change
Extensions of time
46
4 OppositionA co-pending and confusing trademark is the subject of a pending opposition proceeding
Amended
Extensions of time
47
5 Section 45A registered trademark cited as confusing is subject to a pending section 45 proceeding
Amended
Extensions of time
48
6 Official markThe applicant is in the process of actively negotiating a consent from the holder of an official mark
Amended
Extensions of time
49
7 Division of a Protocol applicationThe applicant has filed a request for the division in respect of Canada of the international registration on which the original Protocol application is based and is waiting on the International Bureau for notification that a divisional international registration has been created
No change
Extensions of time
50
8 Respond to an objection which could lead to a refusal under paragraphs 37(1)(b) (c) or (d) of the ActThe applicant requires more time to consider the objection and file a proper response The applicant may request an extension of time for this reason only once in the prosecution of the application
New
Extensions of time
51
9 Compile evidence of distinctiveness under subsection 32(1) of the ActThe applicant is in the process of compiling the sufficient evidence required to show that the trademark was distinctive at the filing date of the application The applicant may request an extension of time for this reason only once in the prosecution of the application New
Fee for Extensions of time
52
The $125 fee to request an extension of time is only required where a person applies to extend the deadline or period of time that is fixed by the Act or prescribed by the Regulations
Fee for Extensions of time
53
Therefore the fee is not required to request an extension of time to respond to an examinerrsquos report as the period of time to respond is not fixed in either the Act or its Regulations
Fee for Extensions of time
54
The fee is required to request an extension of time where the applicant is considered to be in default of the prosecution of the application as the period of time to respond to a default isfixed in section 34 of the Regulations
55
Appointment of a Trademark Agent or an Associate Trademark Agent
The temporary appointment of an agent or associate agent for the purpose of grouping the goods or services of a trademark registration according to the Nice Classification may be done using the Group Goods or Services (Nice Classification) e-service on CIPOrsquos website by including the details of temporary appointment and subsequent revocation in the ldquoClosing detailsrdquo section
56
Temporary Appointment
The undersigned has been appointed under subsection 22(1) of the Trademarks Regulations by the applicant or registered owner as trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as trademark agent is revoked under section 23 of the Trademarks Regulations
57
Temporary Appointment
The undersigned has been appointed under subsection 22(3) of the Trademarks Regulations by the trademark agent that resides in Canada appointed on the following trademark applications and registrations as associate trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as associate agent is revoked under section 23 of the Trademarks Regulations and the appointed trademark agent will remain of record
58
Temporary Appointment
Suggested wording for a temporary appointment and subsequent revocation can also be found in the relevant Practice Notice on the CIPO website
59
Temporary Appointment
60
Appointment of Agent on Transfers
The Office has been receiving requests for transfers under section 48 of the Actin which it is unclear on behalf of whom the request is initiated (ie the transferee or the transferor)
61
Appointment of Agent on Transfers
In view of the requirements in the Regulations on representation and the appointment of trademark agents all requests for transfers under section 48 of the Act must clearly indicate whether the transferee is appointing the agent who submitted the request
62
Appointment of Agent on Transfers
In view of the evidentiary requirements to record or register a transfer on the request of a transferee all requests must indicate which party is requesting the transfer
63
Appointment of Agent on Transfers
Similarly because it is unclear on behalf of whom the request is initiated it is often unclear whether the transferee is appointing an agent to represent them in respect of that trademark application or registration
64
Appointment of Agent on Transfers
Without a new appointment of agent if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
14
Pay Adjusted Renewal Fees Online
15
Pay Adjusted Renewal Fees Online
16
Pay Adjusted Renewal Fees Online
17
Pay Adjusted Renewal Fees Online
If following the issuance of a notice under subsection 441(1) of the Act the registered owner does not respond to the notice by providing the classes for the goods or services the Registrar will send a further notice under subsection 441(3) giving the registered owner 2 months to comply
18
Failure to Furnish
If following the issuance of a notice under subsection 441(3) of the Act the registered owner does not respond by providing the classes for the goods or services the registration may be expunged or not renewed
19
Failure to Furnish
While specificity of goods or services will aid in their classification the Registrar does not have the authority to require that any of the goods or services in the registration be amended to comply with specificity requirements in examination since these provisions are relevant to applications and not registrations
20
Authority to Request Amendment of Statements
21
Renewal Process(Goods or services not classed at renewal)
22
The Inadvisable Stepsto Renewal
bull The registration is renewed and the base fee for one class is paid using the online renewal service and
bull on the same day the goods or services are grouped according to the Nice Classification using the online service and
bull on the same day the fees for the additional Nice classes (as calculated by the registered owner) are submitted by paper
23
Scenario 1
bull The registration is renewed and the base fee for one class is paid using the online renewal service and
bull on the same day the fees for additional Nice classes (as calculated by the registered owner) are submitted by paper however
bull the goods or services have not been grouped and classed
24
Scenario 2
A request to renew is filed by paper together with $400 (renewal fee under the previous Act) and $125 for an additional class (as calculated by the registered owner)
25
Scenario 3
Additional Renewal FeesThe Office is looking to add the ability to pay additional Nice class fees online at the same time as submitting the Nice Classification information
This should speed the process as the registered owner would not have to wait for an adjusted renewal fee notice to pay any outstanding fees
Note that the amount would not be calculated automatically as the final number of classes would not be finalized
26
Renewal process for registrations for which the goods or services have been grouped according to the classes of the Nice Classification system
27
Renewal Fees
Where goods or services of a registration are grouped and classed the registered owner must pay all of the fees set out in Items 14(a) or (b) of the Schedule to the Regulations
The fee is based on the number of classes in the registration at the time of renewal
28
Partial Renewal
29
Partial Renewal
The registration of a trademark may be renewed for some or all of the goods or services in respect of which the trademark is registered
If a registered owner requests the renewal of only some of the goods or services listed in the register for a registration (partial renewal) the registration will be renewed only for those goods and services listed in the renewal request
30
Partial Renewal - Online
A partial renewal can be submitted online only if the
bull Goods or services in respect of which the trademark is registered are grouped according to the classes of the Nice Classification
bull All the goods or services grouped in a class are being renewed and
bull the remaining goods or services are being deleted
31
Partial Renewal ndash Paper
If a partial renewal is not submitted online the Registrar will send a letter acknowledging receipt of the renewal fee
The particulars of the partial renewal will be available and the Registrar will issue a certificate of renewal only after the registration or previous renewal period has expired or the remaining goods or services not being renewed are deleted
32
Partial Renewal ndash Paper
Given the potential delay between submitting a partial renewal and receiving a certificate of renewal registered owners are strongly encouraged to either renew near the expiry of the registration or renewal period or delete the goods or services not being renewed at the time of the partial renewal
33
Partial Renewal
Note that renewing a registration and subsequently deleting some goods or services is not considered a partial renewal as the prescribed renewal fee is based on the number of classes in the registration at the time of renewal
34
35
Extensions of Time
Extensions of time
36
The Branch has been looking for ways to render the end-to-end examination process more efficient and timely
One of the ways to reduce pendency in examination is to amend the practice with respect to the granting extensions of time
Extensions of time
37
Automatic or unwarranted extensions of time slow down the registration process considerably
To put things in perspective in 2018 the Office granted more than 11000 requests for extension of time at the examination stage alone
Extensions of time
38
The practice notice on extensions of time was amended on January 17 to remove the first six-month extension following an examinerrsquos report that was available for practically any reason
Extensions of time
39
Going forward the Office will generally not grant an extension of time to file a response to an examinerrsquos report unless the applicant can demonstrate exceptional circumstances justifying why it is not yet possible to file a proper response
Extensions of time
40
In an effort to implement a smooth transition from the previous practice the practice of not granting an extension of time to reply to an examinerrsquos report unless exceptional circumstances exist will only apply to trademark applications for which an examinerrsquos report has been issued on or after the publication date of this amended practice notice
Extensions of time
41
As a result for applications for which an examinerrsquos report has issued prior to the publication date of January 17 the Office will generally grant the applicant one (1) extension of time of up to a maximum of six (6) months to file a response to an examiners report if the request is justified
Extensions of time
42
The following are examples of what could amount to an exceptional circumstance that would justify an extension of time
Extensions of time No change
43
1 Recent change in trademark agentThere has been a very recent change in the appointed trademark agent and the agent requires time to become familiar with the file
No change
Extensions of time
44
2 Circumstances beyond the control of the person concernedExamples include illness accident death bankruptcy or other serious and unforeseen circumstances
No change
Extensions of time
45
3 TransferThere is a request pending at the Office to record or register the transfer of an application or registered trademark and said transfer would overcome a confusion objection
No change
Extensions of time
46
4 OppositionA co-pending and confusing trademark is the subject of a pending opposition proceeding
Amended
Extensions of time
47
5 Section 45A registered trademark cited as confusing is subject to a pending section 45 proceeding
Amended
Extensions of time
48
6 Official markThe applicant is in the process of actively negotiating a consent from the holder of an official mark
Amended
Extensions of time
49
7 Division of a Protocol applicationThe applicant has filed a request for the division in respect of Canada of the international registration on which the original Protocol application is based and is waiting on the International Bureau for notification that a divisional international registration has been created
No change
Extensions of time
50
8 Respond to an objection which could lead to a refusal under paragraphs 37(1)(b) (c) or (d) of the ActThe applicant requires more time to consider the objection and file a proper response The applicant may request an extension of time for this reason only once in the prosecution of the application
New
Extensions of time
51
9 Compile evidence of distinctiveness under subsection 32(1) of the ActThe applicant is in the process of compiling the sufficient evidence required to show that the trademark was distinctive at the filing date of the application The applicant may request an extension of time for this reason only once in the prosecution of the application New
Fee for Extensions of time
52
The $125 fee to request an extension of time is only required where a person applies to extend the deadline or period of time that is fixed by the Act or prescribed by the Regulations
Fee for Extensions of time
53
Therefore the fee is not required to request an extension of time to respond to an examinerrsquos report as the period of time to respond is not fixed in either the Act or its Regulations
Fee for Extensions of time
54
The fee is required to request an extension of time where the applicant is considered to be in default of the prosecution of the application as the period of time to respond to a default isfixed in section 34 of the Regulations
55
Appointment of a Trademark Agent or an Associate Trademark Agent
The temporary appointment of an agent or associate agent for the purpose of grouping the goods or services of a trademark registration according to the Nice Classification may be done using the Group Goods or Services (Nice Classification) e-service on CIPOrsquos website by including the details of temporary appointment and subsequent revocation in the ldquoClosing detailsrdquo section
56
Temporary Appointment
The undersigned has been appointed under subsection 22(1) of the Trademarks Regulations by the applicant or registered owner as trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as trademark agent is revoked under section 23 of the Trademarks Regulations
57
Temporary Appointment
The undersigned has been appointed under subsection 22(3) of the Trademarks Regulations by the trademark agent that resides in Canada appointed on the following trademark applications and registrations as associate trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as associate agent is revoked under section 23 of the Trademarks Regulations and the appointed trademark agent will remain of record
58
Temporary Appointment
Suggested wording for a temporary appointment and subsequent revocation can also be found in the relevant Practice Notice on the CIPO website
59
Temporary Appointment
60
Appointment of Agent on Transfers
The Office has been receiving requests for transfers under section 48 of the Actin which it is unclear on behalf of whom the request is initiated (ie the transferee or the transferor)
61
Appointment of Agent on Transfers
In view of the requirements in the Regulations on representation and the appointment of trademark agents all requests for transfers under section 48 of the Act must clearly indicate whether the transferee is appointing the agent who submitted the request
62
Appointment of Agent on Transfers
In view of the evidentiary requirements to record or register a transfer on the request of a transferee all requests must indicate which party is requesting the transfer
63
Appointment of Agent on Transfers
Similarly because it is unclear on behalf of whom the request is initiated it is often unclear whether the transferee is appointing an agent to represent them in respect of that trademark application or registration
64
Appointment of Agent on Transfers
Without a new appointment of agent if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
15
Pay Adjusted Renewal Fees Online
16
Pay Adjusted Renewal Fees Online
17
Pay Adjusted Renewal Fees Online
If following the issuance of a notice under subsection 441(1) of the Act the registered owner does not respond to the notice by providing the classes for the goods or services the Registrar will send a further notice under subsection 441(3) giving the registered owner 2 months to comply
18
Failure to Furnish
If following the issuance of a notice under subsection 441(3) of the Act the registered owner does not respond by providing the classes for the goods or services the registration may be expunged or not renewed
19
Failure to Furnish
While specificity of goods or services will aid in their classification the Registrar does not have the authority to require that any of the goods or services in the registration be amended to comply with specificity requirements in examination since these provisions are relevant to applications and not registrations
20
Authority to Request Amendment of Statements
21
Renewal Process(Goods or services not classed at renewal)
22
The Inadvisable Stepsto Renewal
bull The registration is renewed and the base fee for one class is paid using the online renewal service and
bull on the same day the goods or services are grouped according to the Nice Classification using the online service and
bull on the same day the fees for the additional Nice classes (as calculated by the registered owner) are submitted by paper
23
Scenario 1
bull The registration is renewed and the base fee for one class is paid using the online renewal service and
bull on the same day the fees for additional Nice classes (as calculated by the registered owner) are submitted by paper however
bull the goods or services have not been grouped and classed
24
Scenario 2
A request to renew is filed by paper together with $400 (renewal fee under the previous Act) and $125 for an additional class (as calculated by the registered owner)
25
Scenario 3
Additional Renewal FeesThe Office is looking to add the ability to pay additional Nice class fees online at the same time as submitting the Nice Classification information
This should speed the process as the registered owner would not have to wait for an adjusted renewal fee notice to pay any outstanding fees
Note that the amount would not be calculated automatically as the final number of classes would not be finalized
26
Renewal process for registrations for which the goods or services have been grouped according to the classes of the Nice Classification system
27
Renewal Fees
Where goods or services of a registration are grouped and classed the registered owner must pay all of the fees set out in Items 14(a) or (b) of the Schedule to the Regulations
The fee is based on the number of classes in the registration at the time of renewal
28
Partial Renewal
29
Partial Renewal
The registration of a trademark may be renewed for some or all of the goods or services in respect of which the trademark is registered
If a registered owner requests the renewal of only some of the goods or services listed in the register for a registration (partial renewal) the registration will be renewed only for those goods and services listed in the renewal request
30
Partial Renewal - Online
A partial renewal can be submitted online only if the
bull Goods or services in respect of which the trademark is registered are grouped according to the classes of the Nice Classification
bull All the goods or services grouped in a class are being renewed and
bull the remaining goods or services are being deleted
31
Partial Renewal ndash Paper
If a partial renewal is not submitted online the Registrar will send a letter acknowledging receipt of the renewal fee
The particulars of the partial renewal will be available and the Registrar will issue a certificate of renewal only after the registration or previous renewal period has expired or the remaining goods or services not being renewed are deleted
32
Partial Renewal ndash Paper
Given the potential delay between submitting a partial renewal and receiving a certificate of renewal registered owners are strongly encouraged to either renew near the expiry of the registration or renewal period or delete the goods or services not being renewed at the time of the partial renewal
33
Partial Renewal
Note that renewing a registration and subsequently deleting some goods or services is not considered a partial renewal as the prescribed renewal fee is based on the number of classes in the registration at the time of renewal
34
35
Extensions of Time
Extensions of time
36
The Branch has been looking for ways to render the end-to-end examination process more efficient and timely
One of the ways to reduce pendency in examination is to amend the practice with respect to the granting extensions of time
Extensions of time
37
Automatic or unwarranted extensions of time slow down the registration process considerably
To put things in perspective in 2018 the Office granted more than 11000 requests for extension of time at the examination stage alone
Extensions of time
38
The practice notice on extensions of time was amended on January 17 to remove the first six-month extension following an examinerrsquos report that was available for practically any reason
Extensions of time
39
Going forward the Office will generally not grant an extension of time to file a response to an examinerrsquos report unless the applicant can demonstrate exceptional circumstances justifying why it is not yet possible to file a proper response
Extensions of time
40
In an effort to implement a smooth transition from the previous practice the practice of not granting an extension of time to reply to an examinerrsquos report unless exceptional circumstances exist will only apply to trademark applications for which an examinerrsquos report has been issued on or after the publication date of this amended practice notice
Extensions of time
41
As a result for applications for which an examinerrsquos report has issued prior to the publication date of January 17 the Office will generally grant the applicant one (1) extension of time of up to a maximum of six (6) months to file a response to an examiners report if the request is justified
Extensions of time
42
The following are examples of what could amount to an exceptional circumstance that would justify an extension of time
Extensions of time No change
43
1 Recent change in trademark agentThere has been a very recent change in the appointed trademark agent and the agent requires time to become familiar with the file
No change
Extensions of time
44
2 Circumstances beyond the control of the person concernedExamples include illness accident death bankruptcy or other serious and unforeseen circumstances
No change
Extensions of time
45
3 TransferThere is a request pending at the Office to record or register the transfer of an application or registered trademark and said transfer would overcome a confusion objection
No change
Extensions of time
46
4 OppositionA co-pending and confusing trademark is the subject of a pending opposition proceeding
Amended
Extensions of time
47
5 Section 45A registered trademark cited as confusing is subject to a pending section 45 proceeding
Amended
Extensions of time
48
6 Official markThe applicant is in the process of actively negotiating a consent from the holder of an official mark
Amended
Extensions of time
49
7 Division of a Protocol applicationThe applicant has filed a request for the division in respect of Canada of the international registration on which the original Protocol application is based and is waiting on the International Bureau for notification that a divisional international registration has been created
No change
Extensions of time
50
8 Respond to an objection which could lead to a refusal under paragraphs 37(1)(b) (c) or (d) of the ActThe applicant requires more time to consider the objection and file a proper response The applicant may request an extension of time for this reason only once in the prosecution of the application
New
Extensions of time
51
9 Compile evidence of distinctiveness under subsection 32(1) of the ActThe applicant is in the process of compiling the sufficient evidence required to show that the trademark was distinctive at the filing date of the application The applicant may request an extension of time for this reason only once in the prosecution of the application New
Fee for Extensions of time
52
The $125 fee to request an extension of time is only required where a person applies to extend the deadline or period of time that is fixed by the Act or prescribed by the Regulations
Fee for Extensions of time
53
Therefore the fee is not required to request an extension of time to respond to an examinerrsquos report as the period of time to respond is not fixed in either the Act or its Regulations
Fee for Extensions of time
54
The fee is required to request an extension of time where the applicant is considered to be in default of the prosecution of the application as the period of time to respond to a default isfixed in section 34 of the Regulations
55
Appointment of a Trademark Agent or an Associate Trademark Agent
The temporary appointment of an agent or associate agent for the purpose of grouping the goods or services of a trademark registration according to the Nice Classification may be done using the Group Goods or Services (Nice Classification) e-service on CIPOrsquos website by including the details of temporary appointment and subsequent revocation in the ldquoClosing detailsrdquo section
56
Temporary Appointment
The undersigned has been appointed under subsection 22(1) of the Trademarks Regulations by the applicant or registered owner as trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as trademark agent is revoked under section 23 of the Trademarks Regulations
57
Temporary Appointment
The undersigned has been appointed under subsection 22(3) of the Trademarks Regulations by the trademark agent that resides in Canada appointed on the following trademark applications and registrations as associate trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as associate agent is revoked under section 23 of the Trademarks Regulations and the appointed trademark agent will remain of record
58
Temporary Appointment
Suggested wording for a temporary appointment and subsequent revocation can also be found in the relevant Practice Notice on the CIPO website
59
Temporary Appointment
60
Appointment of Agent on Transfers
The Office has been receiving requests for transfers under section 48 of the Actin which it is unclear on behalf of whom the request is initiated (ie the transferee or the transferor)
61
Appointment of Agent on Transfers
In view of the requirements in the Regulations on representation and the appointment of trademark agents all requests for transfers under section 48 of the Act must clearly indicate whether the transferee is appointing the agent who submitted the request
62
Appointment of Agent on Transfers
In view of the evidentiary requirements to record or register a transfer on the request of a transferee all requests must indicate which party is requesting the transfer
63
Appointment of Agent on Transfers
Similarly because it is unclear on behalf of whom the request is initiated it is often unclear whether the transferee is appointing an agent to represent them in respect of that trademark application or registration
64
Appointment of Agent on Transfers
Without a new appointment of agent if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
16
Pay Adjusted Renewal Fees Online
17
Pay Adjusted Renewal Fees Online
If following the issuance of a notice under subsection 441(1) of the Act the registered owner does not respond to the notice by providing the classes for the goods or services the Registrar will send a further notice under subsection 441(3) giving the registered owner 2 months to comply
18
Failure to Furnish
If following the issuance of a notice under subsection 441(3) of the Act the registered owner does not respond by providing the classes for the goods or services the registration may be expunged or not renewed
19
Failure to Furnish
While specificity of goods or services will aid in their classification the Registrar does not have the authority to require that any of the goods or services in the registration be amended to comply with specificity requirements in examination since these provisions are relevant to applications and not registrations
20
Authority to Request Amendment of Statements
21
Renewal Process(Goods or services not classed at renewal)
22
The Inadvisable Stepsto Renewal
bull The registration is renewed and the base fee for one class is paid using the online renewal service and
bull on the same day the goods or services are grouped according to the Nice Classification using the online service and
bull on the same day the fees for the additional Nice classes (as calculated by the registered owner) are submitted by paper
23
Scenario 1
bull The registration is renewed and the base fee for one class is paid using the online renewal service and
bull on the same day the fees for additional Nice classes (as calculated by the registered owner) are submitted by paper however
bull the goods or services have not been grouped and classed
24
Scenario 2
A request to renew is filed by paper together with $400 (renewal fee under the previous Act) and $125 for an additional class (as calculated by the registered owner)
25
Scenario 3
Additional Renewal FeesThe Office is looking to add the ability to pay additional Nice class fees online at the same time as submitting the Nice Classification information
This should speed the process as the registered owner would not have to wait for an adjusted renewal fee notice to pay any outstanding fees
Note that the amount would not be calculated automatically as the final number of classes would not be finalized
26
Renewal process for registrations for which the goods or services have been grouped according to the classes of the Nice Classification system
27
Renewal Fees
Where goods or services of a registration are grouped and classed the registered owner must pay all of the fees set out in Items 14(a) or (b) of the Schedule to the Regulations
The fee is based on the number of classes in the registration at the time of renewal
28
Partial Renewal
29
Partial Renewal
The registration of a trademark may be renewed for some or all of the goods or services in respect of which the trademark is registered
If a registered owner requests the renewal of only some of the goods or services listed in the register for a registration (partial renewal) the registration will be renewed only for those goods and services listed in the renewal request
30
Partial Renewal - Online
A partial renewal can be submitted online only if the
bull Goods or services in respect of which the trademark is registered are grouped according to the classes of the Nice Classification
bull All the goods or services grouped in a class are being renewed and
bull the remaining goods or services are being deleted
31
Partial Renewal ndash Paper
If a partial renewal is not submitted online the Registrar will send a letter acknowledging receipt of the renewal fee
The particulars of the partial renewal will be available and the Registrar will issue a certificate of renewal only after the registration or previous renewal period has expired or the remaining goods or services not being renewed are deleted
32
Partial Renewal ndash Paper
Given the potential delay between submitting a partial renewal and receiving a certificate of renewal registered owners are strongly encouraged to either renew near the expiry of the registration or renewal period or delete the goods or services not being renewed at the time of the partial renewal
33
Partial Renewal
Note that renewing a registration and subsequently deleting some goods or services is not considered a partial renewal as the prescribed renewal fee is based on the number of classes in the registration at the time of renewal
34
35
Extensions of Time
Extensions of time
36
The Branch has been looking for ways to render the end-to-end examination process more efficient and timely
One of the ways to reduce pendency in examination is to amend the practice with respect to the granting extensions of time
Extensions of time
37
Automatic or unwarranted extensions of time slow down the registration process considerably
To put things in perspective in 2018 the Office granted more than 11000 requests for extension of time at the examination stage alone
Extensions of time
38
The practice notice on extensions of time was amended on January 17 to remove the first six-month extension following an examinerrsquos report that was available for practically any reason
Extensions of time
39
Going forward the Office will generally not grant an extension of time to file a response to an examinerrsquos report unless the applicant can demonstrate exceptional circumstances justifying why it is not yet possible to file a proper response
Extensions of time
40
In an effort to implement a smooth transition from the previous practice the practice of not granting an extension of time to reply to an examinerrsquos report unless exceptional circumstances exist will only apply to trademark applications for which an examinerrsquos report has been issued on or after the publication date of this amended practice notice
Extensions of time
41
As a result for applications for which an examinerrsquos report has issued prior to the publication date of January 17 the Office will generally grant the applicant one (1) extension of time of up to a maximum of six (6) months to file a response to an examiners report if the request is justified
Extensions of time
42
The following are examples of what could amount to an exceptional circumstance that would justify an extension of time
Extensions of time No change
43
1 Recent change in trademark agentThere has been a very recent change in the appointed trademark agent and the agent requires time to become familiar with the file
No change
Extensions of time
44
2 Circumstances beyond the control of the person concernedExamples include illness accident death bankruptcy or other serious and unforeseen circumstances
No change
Extensions of time
45
3 TransferThere is a request pending at the Office to record or register the transfer of an application or registered trademark and said transfer would overcome a confusion objection
No change
Extensions of time
46
4 OppositionA co-pending and confusing trademark is the subject of a pending opposition proceeding
Amended
Extensions of time
47
5 Section 45A registered trademark cited as confusing is subject to a pending section 45 proceeding
Amended
Extensions of time
48
6 Official markThe applicant is in the process of actively negotiating a consent from the holder of an official mark
Amended
Extensions of time
49
7 Division of a Protocol applicationThe applicant has filed a request for the division in respect of Canada of the international registration on which the original Protocol application is based and is waiting on the International Bureau for notification that a divisional international registration has been created
No change
Extensions of time
50
8 Respond to an objection which could lead to a refusal under paragraphs 37(1)(b) (c) or (d) of the ActThe applicant requires more time to consider the objection and file a proper response The applicant may request an extension of time for this reason only once in the prosecution of the application
New
Extensions of time
51
9 Compile evidence of distinctiveness under subsection 32(1) of the ActThe applicant is in the process of compiling the sufficient evidence required to show that the trademark was distinctive at the filing date of the application The applicant may request an extension of time for this reason only once in the prosecution of the application New
Fee for Extensions of time
52
The $125 fee to request an extension of time is only required where a person applies to extend the deadline or period of time that is fixed by the Act or prescribed by the Regulations
Fee for Extensions of time
53
Therefore the fee is not required to request an extension of time to respond to an examinerrsquos report as the period of time to respond is not fixed in either the Act or its Regulations
Fee for Extensions of time
54
The fee is required to request an extension of time where the applicant is considered to be in default of the prosecution of the application as the period of time to respond to a default isfixed in section 34 of the Regulations
55
Appointment of a Trademark Agent or an Associate Trademark Agent
The temporary appointment of an agent or associate agent for the purpose of grouping the goods or services of a trademark registration according to the Nice Classification may be done using the Group Goods or Services (Nice Classification) e-service on CIPOrsquos website by including the details of temporary appointment and subsequent revocation in the ldquoClosing detailsrdquo section
56
Temporary Appointment
The undersigned has been appointed under subsection 22(1) of the Trademarks Regulations by the applicant or registered owner as trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as trademark agent is revoked under section 23 of the Trademarks Regulations
57
Temporary Appointment
The undersigned has been appointed under subsection 22(3) of the Trademarks Regulations by the trademark agent that resides in Canada appointed on the following trademark applications and registrations as associate trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as associate agent is revoked under section 23 of the Trademarks Regulations and the appointed trademark agent will remain of record
58
Temporary Appointment
Suggested wording for a temporary appointment and subsequent revocation can also be found in the relevant Practice Notice on the CIPO website
59
Temporary Appointment
60
Appointment of Agent on Transfers
The Office has been receiving requests for transfers under section 48 of the Actin which it is unclear on behalf of whom the request is initiated (ie the transferee or the transferor)
61
Appointment of Agent on Transfers
In view of the requirements in the Regulations on representation and the appointment of trademark agents all requests for transfers under section 48 of the Act must clearly indicate whether the transferee is appointing the agent who submitted the request
62
Appointment of Agent on Transfers
In view of the evidentiary requirements to record or register a transfer on the request of a transferee all requests must indicate which party is requesting the transfer
63
Appointment of Agent on Transfers
Similarly because it is unclear on behalf of whom the request is initiated it is often unclear whether the transferee is appointing an agent to represent them in respect of that trademark application or registration
64
Appointment of Agent on Transfers
Without a new appointment of agent if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
17
Pay Adjusted Renewal Fees Online
If following the issuance of a notice under subsection 441(1) of the Act the registered owner does not respond to the notice by providing the classes for the goods or services the Registrar will send a further notice under subsection 441(3) giving the registered owner 2 months to comply
18
Failure to Furnish
If following the issuance of a notice under subsection 441(3) of the Act the registered owner does not respond by providing the classes for the goods or services the registration may be expunged or not renewed
19
Failure to Furnish
While specificity of goods or services will aid in their classification the Registrar does not have the authority to require that any of the goods or services in the registration be amended to comply with specificity requirements in examination since these provisions are relevant to applications and not registrations
20
Authority to Request Amendment of Statements
21
Renewal Process(Goods or services not classed at renewal)
22
The Inadvisable Stepsto Renewal
bull The registration is renewed and the base fee for one class is paid using the online renewal service and
bull on the same day the goods or services are grouped according to the Nice Classification using the online service and
bull on the same day the fees for the additional Nice classes (as calculated by the registered owner) are submitted by paper
23
Scenario 1
bull The registration is renewed and the base fee for one class is paid using the online renewal service and
bull on the same day the fees for additional Nice classes (as calculated by the registered owner) are submitted by paper however
bull the goods or services have not been grouped and classed
24
Scenario 2
A request to renew is filed by paper together with $400 (renewal fee under the previous Act) and $125 for an additional class (as calculated by the registered owner)
25
Scenario 3
Additional Renewal FeesThe Office is looking to add the ability to pay additional Nice class fees online at the same time as submitting the Nice Classification information
This should speed the process as the registered owner would not have to wait for an adjusted renewal fee notice to pay any outstanding fees
Note that the amount would not be calculated automatically as the final number of classes would not be finalized
26
Renewal process for registrations for which the goods or services have been grouped according to the classes of the Nice Classification system
27
Renewal Fees
Where goods or services of a registration are grouped and classed the registered owner must pay all of the fees set out in Items 14(a) or (b) of the Schedule to the Regulations
The fee is based on the number of classes in the registration at the time of renewal
28
Partial Renewal
29
Partial Renewal
The registration of a trademark may be renewed for some or all of the goods or services in respect of which the trademark is registered
If a registered owner requests the renewal of only some of the goods or services listed in the register for a registration (partial renewal) the registration will be renewed only for those goods and services listed in the renewal request
30
Partial Renewal - Online
A partial renewal can be submitted online only if the
bull Goods or services in respect of which the trademark is registered are grouped according to the classes of the Nice Classification
bull All the goods or services grouped in a class are being renewed and
bull the remaining goods or services are being deleted
31
Partial Renewal ndash Paper
If a partial renewal is not submitted online the Registrar will send a letter acknowledging receipt of the renewal fee
The particulars of the partial renewal will be available and the Registrar will issue a certificate of renewal only after the registration or previous renewal period has expired or the remaining goods or services not being renewed are deleted
32
Partial Renewal ndash Paper
Given the potential delay between submitting a partial renewal and receiving a certificate of renewal registered owners are strongly encouraged to either renew near the expiry of the registration or renewal period or delete the goods or services not being renewed at the time of the partial renewal
33
Partial Renewal
Note that renewing a registration and subsequently deleting some goods or services is not considered a partial renewal as the prescribed renewal fee is based on the number of classes in the registration at the time of renewal
34
35
Extensions of Time
Extensions of time
36
The Branch has been looking for ways to render the end-to-end examination process more efficient and timely
One of the ways to reduce pendency in examination is to amend the practice with respect to the granting extensions of time
Extensions of time
37
Automatic or unwarranted extensions of time slow down the registration process considerably
To put things in perspective in 2018 the Office granted more than 11000 requests for extension of time at the examination stage alone
Extensions of time
38
The practice notice on extensions of time was amended on January 17 to remove the first six-month extension following an examinerrsquos report that was available for practically any reason
Extensions of time
39
Going forward the Office will generally not grant an extension of time to file a response to an examinerrsquos report unless the applicant can demonstrate exceptional circumstances justifying why it is not yet possible to file a proper response
Extensions of time
40
In an effort to implement a smooth transition from the previous practice the practice of not granting an extension of time to reply to an examinerrsquos report unless exceptional circumstances exist will only apply to trademark applications for which an examinerrsquos report has been issued on or after the publication date of this amended practice notice
Extensions of time
41
As a result for applications for which an examinerrsquos report has issued prior to the publication date of January 17 the Office will generally grant the applicant one (1) extension of time of up to a maximum of six (6) months to file a response to an examiners report if the request is justified
Extensions of time
42
The following are examples of what could amount to an exceptional circumstance that would justify an extension of time
Extensions of time No change
43
1 Recent change in trademark agentThere has been a very recent change in the appointed trademark agent and the agent requires time to become familiar with the file
No change
Extensions of time
44
2 Circumstances beyond the control of the person concernedExamples include illness accident death bankruptcy or other serious and unforeseen circumstances
No change
Extensions of time
45
3 TransferThere is a request pending at the Office to record or register the transfer of an application or registered trademark and said transfer would overcome a confusion objection
No change
Extensions of time
46
4 OppositionA co-pending and confusing trademark is the subject of a pending opposition proceeding
Amended
Extensions of time
47
5 Section 45A registered trademark cited as confusing is subject to a pending section 45 proceeding
Amended
Extensions of time
48
6 Official markThe applicant is in the process of actively negotiating a consent from the holder of an official mark
Amended
Extensions of time
49
7 Division of a Protocol applicationThe applicant has filed a request for the division in respect of Canada of the international registration on which the original Protocol application is based and is waiting on the International Bureau for notification that a divisional international registration has been created
No change
Extensions of time
50
8 Respond to an objection which could lead to a refusal under paragraphs 37(1)(b) (c) or (d) of the ActThe applicant requires more time to consider the objection and file a proper response The applicant may request an extension of time for this reason only once in the prosecution of the application
New
Extensions of time
51
9 Compile evidence of distinctiveness under subsection 32(1) of the ActThe applicant is in the process of compiling the sufficient evidence required to show that the trademark was distinctive at the filing date of the application The applicant may request an extension of time for this reason only once in the prosecution of the application New
Fee for Extensions of time
52
The $125 fee to request an extension of time is only required where a person applies to extend the deadline or period of time that is fixed by the Act or prescribed by the Regulations
Fee for Extensions of time
53
Therefore the fee is not required to request an extension of time to respond to an examinerrsquos report as the period of time to respond is not fixed in either the Act or its Regulations
Fee for Extensions of time
54
The fee is required to request an extension of time where the applicant is considered to be in default of the prosecution of the application as the period of time to respond to a default isfixed in section 34 of the Regulations
55
Appointment of a Trademark Agent or an Associate Trademark Agent
The temporary appointment of an agent or associate agent for the purpose of grouping the goods or services of a trademark registration according to the Nice Classification may be done using the Group Goods or Services (Nice Classification) e-service on CIPOrsquos website by including the details of temporary appointment and subsequent revocation in the ldquoClosing detailsrdquo section
56
Temporary Appointment
The undersigned has been appointed under subsection 22(1) of the Trademarks Regulations by the applicant or registered owner as trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as trademark agent is revoked under section 23 of the Trademarks Regulations
57
Temporary Appointment
The undersigned has been appointed under subsection 22(3) of the Trademarks Regulations by the trademark agent that resides in Canada appointed on the following trademark applications and registrations as associate trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as associate agent is revoked under section 23 of the Trademarks Regulations and the appointed trademark agent will remain of record
58
Temporary Appointment
Suggested wording for a temporary appointment and subsequent revocation can also be found in the relevant Practice Notice on the CIPO website
59
Temporary Appointment
60
Appointment of Agent on Transfers
The Office has been receiving requests for transfers under section 48 of the Actin which it is unclear on behalf of whom the request is initiated (ie the transferee or the transferor)
61
Appointment of Agent on Transfers
In view of the requirements in the Regulations on representation and the appointment of trademark agents all requests for transfers under section 48 of the Act must clearly indicate whether the transferee is appointing the agent who submitted the request
62
Appointment of Agent on Transfers
In view of the evidentiary requirements to record or register a transfer on the request of a transferee all requests must indicate which party is requesting the transfer
63
Appointment of Agent on Transfers
Similarly because it is unclear on behalf of whom the request is initiated it is often unclear whether the transferee is appointing an agent to represent them in respect of that trademark application or registration
64
Appointment of Agent on Transfers
Without a new appointment of agent if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
If following the issuance of a notice under subsection 441(1) of the Act the registered owner does not respond to the notice by providing the classes for the goods or services the Registrar will send a further notice under subsection 441(3) giving the registered owner 2 months to comply
18
Failure to Furnish
If following the issuance of a notice under subsection 441(3) of the Act the registered owner does not respond by providing the classes for the goods or services the registration may be expunged or not renewed
19
Failure to Furnish
While specificity of goods or services will aid in their classification the Registrar does not have the authority to require that any of the goods or services in the registration be amended to comply with specificity requirements in examination since these provisions are relevant to applications and not registrations
20
Authority to Request Amendment of Statements
21
Renewal Process(Goods or services not classed at renewal)
22
The Inadvisable Stepsto Renewal
bull The registration is renewed and the base fee for one class is paid using the online renewal service and
bull on the same day the goods or services are grouped according to the Nice Classification using the online service and
bull on the same day the fees for the additional Nice classes (as calculated by the registered owner) are submitted by paper
23
Scenario 1
bull The registration is renewed and the base fee for one class is paid using the online renewal service and
bull on the same day the fees for additional Nice classes (as calculated by the registered owner) are submitted by paper however
bull the goods or services have not been grouped and classed
24
Scenario 2
A request to renew is filed by paper together with $400 (renewal fee under the previous Act) and $125 for an additional class (as calculated by the registered owner)
25
Scenario 3
Additional Renewal FeesThe Office is looking to add the ability to pay additional Nice class fees online at the same time as submitting the Nice Classification information
This should speed the process as the registered owner would not have to wait for an adjusted renewal fee notice to pay any outstanding fees
Note that the amount would not be calculated automatically as the final number of classes would not be finalized
26
Renewal process for registrations for which the goods or services have been grouped according to the classes of the Nice Classification system
27
Renewal Fees
Where goods or services of a registration are grouped and classed the registered owner must pay all of the fees set out in Items 14(a) or (b) of the Schedule to the Regulations
The fee is based on the number of classes in the registration at the time of renewal
28
Partial Renewal
29
Partial Renewal
The registration of a trademark may be renewed for some or all of the goods or services in respect of which the trademark is registered
If a registered owner requests the renewal of only some of the goods or services listed in the register for a registration (partial renewal) the registration will be renewed only for those goods and services listed in the renewal request
30
Partial Renewal - Online
A partial renewal can be submitted online only if the
bull Goods or services in respect of which the trademark is registered are grouped according to the classes of the Nice Classification
bull All the goods or services grouped in a class are being renewed and
bull the remaining goods or services are being deleted
31
Partial Renewal ndash Paper
If a partial renewal is not submitted online the Registrar will send a letter acknowledging receipt of the renewal fee
The particulars of the partial renewal will be available and the Registrar will issue a certificate of renewal only after the registration or previous renewal period has expired or the remaining goods or services not being renewed are deleted
32
Partial Renewal ndash Paper
Given the potential delay between submitting a partial renewal and receiving a certificate of renewal registered owners are strongly encouraged to either renew near the expiry of the registration or renewal period or delete the goods or services not being renewed at the time of the partial renewal
33
Partial Renewal
Note that renewing a registration and subsequently deleting some goods or services is not considered a partial renewal as the prescribed renewal fee is based on the number of classes in the registration at the time of renewal
34
35
Extensions of Time
Extensions of time
36
The Branch has been looking for ways to render the end-to-end examination process more efficient and timely
One of the ways to reduce pendency in examination is to amend the practice with respect to the granting extensions of time
Extensions of time
37
Automatic or unwarranted extensions of time slow down the registration process considerably
To put things in perspective in 2018 the Office granted more than 11000 requests for extension of time at the examination stage alone
Extensions of time
38
The practice notice on extensions of time was amended on January 17 to remove the first six-month extension following an examinerrsquos report that was available for practically any reason
Extensions of time
39
Going forward the Office will generally not grant an extension of time to file a response to an examinerrsquos report unless the applicant can demonstrate exceptional circumstances justifying why it is not yet possible to file a proper response
Extensions of time
40
In an effort to implement a smooth transition from the previous practice the practice of not granting an extension of time to reply to an examinerrsquos report unless exceptional circumstances exist will only apply to trademark applications for which an examinerrsquos report has been issued on or after the publication date of this amended practice notice
Extensions of time
41
As a result for applications for which an examinerrsquos report has issued prior to the publication date of January 17 the Office will generally grant the applicant one (1) extension of time of up to a maximum of six (6) months to file a response to an examiners report if the request is justified
Extensions of time
42
The following are examples of what could amount to an exceptional circumstance that would justify an extension of time
Extensions of time No change
43
1 Recent change in trademark agentThere has been a very recent change in the appointed trademark agent and the agent requires time to become familiar with the file
No change
Extensions of time
44
2 Circumstances beyond the control of the person concernedExamples include illness accident death bankruptcy or other serious and unforeseen circumstances
No change
Extensions of time
45
3 TransferThere is a request pending at the Office to record or register the transfer of an application or registered trademark and said transfer would overcome a confusion objection
No change
Extensions of time
46
4 OppositionA co-pending and confusing trademark is the subject of a pending opposition proceeding
Amended
Extensions of time
47
5 Section 45A registered trademark cited as confusing is subject to a pending section 45 proceeding
Amended
Extensions of time
48
6 Official markThe applicant is in the process of actively negotiating a consent from the holder of an official mark
Amended
Extensions of time
49
7 Division of a Protocol applicationThe applicant has filed a request for the division in respect of Canada of the international registration on which the original Protocol application is based and is waiting on the International Bureau for notification that a divisional international registration has been created
No change
Extensions of time
50
8 Respond to an objection which could lead to a refusal under paragraphs 37(1)(b) (c) or (d) of the ActThe applicant requires more time to consider the objection and file a proper response The applicant may request an extension of time for this reason only once in the prosecution of the application
New
Extensions of time
51
9 Compile evidence of distinctiveness under subsection 32(1) of the ActThe applicant is in the process of compiling the sufficient evidence required to show that the trademark was distinctive at the filing date of the application The applicant may request an extension of time for this reason only once in the prosecution of the application New
Fee for Extensions of time
52
The $125 fee to request an extension of time is only required where a person applies to extend the deadline or period of time that is fixed by the Act or prescribed by the Regulations
Fee for Extensions of time
53
Therefore the fee is not required to request an extension of time to respond to an examinerrsquos report as the period of time to respond is not fixed in either the Act or its Regulations
Fee for Extensions of time
54
The fee is required to request an extension of time where the applicant is considered to be in default of the prosecution of the application as the period of time to respond to a default isfixed in section 34 of the Regulations
55
Appointment of a Trademark Agent or an Associate Trademark Agent
The temporary appointment of an agent or associate agent for the purpose of grouping the goods or services of a trademark registration according to the Nice Classification may be done using the Group Goods or Services (Nice Classification) e-service on CIPOrsquos website by including the details of temporary appointment and subsequent revocation in the ldquoClosing detailsrdquo section
56
Temporary Appointment
The undersigned has been appointed under subsection 22(1) of the Trademarks Regulations by the applicant or registered owner as trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as trademark agent is revoked under section 23 of the Trademarks Regulations
57
Temporary Appointment
The undersigned has been appointed under subsection 22(3) of the Trademarks Regulations by the trademark agent that resides in Canada appointed on the following trademark applications and registrations as associate trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as associate agent is revoked under section 23 of the Trademarks Regulations and the appointed trademark agent will remain of record
58
Temporary Appointment
Suggested wording for a temporary appointment and subsequent revocation can also be found in the relevant Practice Notice on the CIPO website
59
Temporary Appointment
60
Appointment of Agent on Transfers
The Office has been receiving requests for transfers under section 48 of the Actin which it is unclear on behalf of whom the request is initiated (ie the transferee or the transferor)
61
Appointment of Agent on Transfers
In view of the requirements in the Regulations on representation and the appointment of trademark agents all requests for transfers under section 48 of the Act must clearly indicate whether the transferee is appointing the agent who submitted the request
62
Appointment of Agent on Transfers
In view of the evidentiary requirements to record or register a transfer on the request of a transferee all requests must indicate which party is requesting the transfer
63
Appointment of Agent on Transfers
Similarly because it is unclear on behalf of whom the request is initiated it is often unclear whether the transferee is appointing an agent to represent them in respect of that trademark application or registration
64
Appointment of Agent on Transfers
Without a new appointment of agent if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
If following the issuance of a notice under subsection 441(3) of the Act the registered owner does not respond by providing the classes for the goods or services the registration may be expunged or not renewed
19
Failure to Furnish
While specificity of goods or services will aid in their classification the Registrar does not have the authority to require that any of the goods or services in the registration be amended to comply with specificity requirements in examination since these provisions are relevant to applications and not registrations
20
Authority to Request Amendment of Statements
21
Renewal Process(Goods or services not classed at renewal)
22
The Inadvisable Stepsto Renewal
bull The registration is renewed and the base fee for one class is paid using the online renewal service and
bull on the same day the goods or services are grouped according to the Nice Classification using the online service and
bull on the same day the fees for the additional Nice classes (as calculated by the registered owner) are submitted by paper
23
Scenario 1
bull The registration is renewed and the base fee for one class is paid using the online renewal service and
bull on the same day the fees for additional Nice classes (as calculated by the registered owner) are submitted by paper however
bull the goods or services have not been grouped and classed
24
Scenario 2
A request to renew is filed by paper together with $400 (renewal fee under the previous Act) and $125 for an additional class (as calculated by the registered owner)
25
Scenario 3
Additional Renewal FeesThe Office is looking to add the ability to pay additional Nice class fees online at the same time as submitting the Nice Classification information
This should speed the process as the registered owner would not have to wait for an adjusted renewal fee notice to pay any outstanding fees
Note that the amount would not be calculated automatically as the final number of classes would not be finalized
26
Renewal process for registrations for which the goods or services have been grouped according to the classes of the Nice Classification system
27
Renewal Fees
Where goods or services of a registration are grouped and classed the registered owner must pay all of the fees set out in Items 14(a) or (b) of the Schedule to the Regulations
The fee is based on the number of classes in the registration at the time of renewal
28
Partial Renewal
29
Partial Renewal
The registration of a trademark may be renewed for some or all of the goods or services in respect of which the trademark is registered
If a registered owner requests the renewal of only some of the goods or services listed in the register for a registration (partial renewal) the registration will be renewed only for those goods and services listed in the renewal request
30
Partial Renewal - Online
A partial renewal can be submitted online only if the
bull Goods or services in respect of which the trademark is registered are grouped according to the classes of the Nice Classification
bull All the goods or services grouped in a class are being renewed and
bull the remaining goods or services are being deleted
31
Partial Renewal ndash Paper
If a partial renewal is not submitted online the Registrar will send a letter acknowledging receipt of the renewal fee
The particulars of the partial renewal will be available and the Registrar will issue a certificate of renewal only after the registration or previous renewal period has expired or the remaining goods or services not being renewed are deleted
32
Partial Renewal ndash Paper
Given the potential delay between submitting a partial renewal and receiving a certificate of renewal registered owners are strongly encouraged to either renew near the expiry of the registration or renewal period or delete the goods or services not being renewed at the time of the partial renewal
33
Partial Renewal
Note that renewing a registration and subsequently deleting some goods or services is not considered a partial renewal as the prescribed renewal fee is based on the number of classes in the registration at the time of renewal
34
35
Extensions of Time
Extensions of time
36
The Branch has been looking for ways to render the end-to-end examination process more efficient and timely
One of the ways to reduce pendency in examination is to amend the practice with respect to the granting extensions of time
Extensions of time
37
Automatic or unwarranted extensions of time slow down the registration process considerably
To put things in perspective in 2018 the Office granted more than 11000 requests for extension of time at the examination stage alone
Extensions of time
38
The practice notice on extensions of time was amended on January 17 to remove the first six-month extension following an examinerrsquos report that was available for practically any reason
Extensions of time
39
Going forward the Office will generally not grant an extension of time to file a response to an examinerrsquos report unless the applicant can demonstrate exceptional circumstances justifying why it is not yet possible to file a proper response
Extensions of time
40
In an effort to implement a smooth transition from the previous practice the practice of not granting an extension of time to reply to an examinerrsquos report unless exceptional circumstances exist will only apply to trademark applications for which an examinerrsquos report has been issued on or after the publication date of this amended practice notice
Extensions of time
41
As a result for applications for which an examinerrsquos report has issued prior to the publication date of January 17 the Office will generally grant the applicant one (1) extension of time of up to a maximum of six (6) months to file a response to an examiners report if the request is justified
Extensions of time
42
The following are examples of what could amount to an exceptional circumstance that would justify an extension of time
Extensions of time No change
43
1 Recent change in trademark agentThere has been a very recent change in the appointed trademark agent and the agent requires time to become familiar with the file
No change
Extensions of time
44
2 Circumstances beyond the control of the person concernedExamples include illness accident death bankruptcy or other serious and unforeseen circumstances
No change
Extensions of time
45
3 TransferThere is a request pending at the Office to record or register the transfer of an application or registered trademark and said transfer would overcome a confusion objection
No change
Extensions of time
46
4 OppositionA co-pending and confusing trademark is the subject of a pending opposition proceeding
Amended
Extensions of time
47
5 Section 45A registered trademark cited as confusing is subject to a pending section 45 proceeding
Amended
Extensions of time
48
6 Official markThe applicant is in the process of actively negotiating a consent from the holder of an official mark
Amended
Extensions of time
49
7 Division of a Protocol applicationThe applicant has filed a request for the division in respect of Canada of the international registration on which the original Protocol application is based and is waiting on the International Bureau for notification that a divisional international registration has been created
No change
Extensions of time
50
8 Respond to an objection which could lead to a refusal under paragraphs 37(1)(b) (c) or (d) of the ActThe applicant requires more time to consider the objection and file a proper response The applicant may request an extension of time for this reason only once in the prosecution of the application
New
Extensions of time
51
9 Compile evidence of distinctiveness under subsection 32(1) of the ActThe applicant is in the process of compiling the sufficient evidence required to show that the trademark was distinctive at the filing date of the application The applicant may request an extension of time for this reason only once in the prosecution of the application New
Fee for Extensions of time
52
The $125 fee to request an extension of time is only required where a person applies to extend the deadline or period of time that is fixed by the Act or prescribed by the Regulations
Fee for Extensions of time
53
Therefore the fee is not required to request an extension of time to respond to an examinerrsquos report as the period of time to respond is not fixed in either the Act or its Regulations
Fee for Extensions of time
54
The fee is required to request an extension of time where the applicant is considered to be in default of the prosecution of the application as the period of time to respond to a default isfixed in section 34 of the Regulations
55
Appointment of a Trademark Agent or an Associate Trademark Agent
The temporary appointment of an agent or associate agent for the purpose of grouping the goods or services of a trademark registration according to the Nice Classification may be done using the Group Goods or Services (Nice Classification) e-service on CIPOrsquos website by including the details of temporary appointment and subsequent revocation in the ldquoClosing detailsrdquo section
56
Temporary Appointment
The undersigned has been appointed under subsection 22(1) of the Trademarks Regulations by the applicant or registered owner as trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as trademark agent is revoked under section 23 of the Trademarks Regulations
57
Temporary Appointment
The undersigned has been appointed under subsection 22(3) of the Trademarks Regulations by the trademark agent that resides in Canada appointed on the following trademark applications and registrations as associate trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as associate agent is revoked under section 23 of the Trademarks Regulations and the appointed trademark agent will remain of record
58
Temporary Appointment
Suggested wording for a temporary appointment and subsequent revocation can also be found in the relevant Practice Notice on the CIPO website
59
Temporary Appointment
60
Appointment of Agent on Transfers
The Office has been receiving requests for transfers under section 48 of the Actin which it is unclear on behalf of whom the request is initiated (ie the transferee or the transferor)
61
Appointment of Agent on Transfers
In view of the requirements in the Regulations on representation and the appointment of trademark agents all requests for transfers under section 48 of the Act must clearly indicate whether the transferee is appointing the agent who submitted the request
62
Appointment of Agent on Transfers
In view of the evidentiary requirements to record or register a transfer on the request of a transferee all requests must indicate which party is requesting the transfer
63
Appointment of Agent on Transfers
Similarly because it is unclear on behalf of whom the request is initiated it is often unclear whether the transferee is appointing an agent to represent them in respect of that trademark application or registration
64
Appointment of Agent on Transfers
Without a new appointment of agent if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
While specificity of goods or services will aid in their classification the Registrar does not have the authority to require that any of the goods or services in the registration be amended to comply with specificity requirements in examination since these provisions are relevant to applications and not registrations
20
Authority to Request Amendment of Statements
21
Renewal Process(Goods or services not classed at renewal)
22
The Inadvisable Stepsto Renewal
bull The registration is renewed and the base fee for one class is paid using the online renewal service and
bull on the same day the goods or services are grouped according to the Nice Classification using the online service and
bull on the same day the fees for the additional Nice classes (as calculated by the registered owner) are submitted by paper
23
Scenario 1
bull The registration is renewed and the base fee for one class is paid using the online renewal service and
bull on the same day the fees for additional Nice classes (as calculated by the registered owner) are submitted by paper however
bull the goods or services have not been grouped and classed
24
Scenario 2
A request to renew is filed by paper together with $400 (renewal fee under the previous Act) and $125 for an additional class (as calculated by the registered owner)
25
Scenario 3
Additional Renewal FeesThe Office is looking to add the ability to pay additional Nice class fees online at the same time as submitting the Nice Classification information
This should speed the process as the registered owner would not have to wait for an adjusted renewal fee notice to pay any outstanding fees
Note that the amount would not be calculated automatically as the final number of classes would not be finalized
26
Renewal process for registrations for which the goods or services have been grouped according to the classes of the Nice Classification system
27
Renewal Fees
Where goods or services of a registration are grouped and classed the registered owner must pay all of the fees set out in Items 14(a) or (b) of the Schedule to the Regulations
The fee is based on the number of classes in the registration at the time of renewal
28
Partial Renewal
29
Partial Renewal
The registration of a trademark may be renewed for some or all of the goods or services in respect of which the trademark is registered
If a registered owner requests the renewal of only some of the goods or services listed in the register for a registration (partial renewal) the registration will be renewed only for those goods and services listed in the renewal request
30
Partial Renewal - Online
A partial renewal can be submitted online only if the
bull Goods or services in respect of which the trademark is registered are grouped according to the classes of the Nice Classification
bull All the goods or services grouped in a class are being renewed and
bull the remaining goods or services are being deleted
31
Partial Renewal ndash Paper
If a partial renewal is not submitted online the Registrar will send a letter acknowledging receipt of the renewal fee
The particulars of the partial renewal will be available and the Registrar will issue a certificate of renewal only after the registration or previous renewal period has expired or the remaining goods or services not being renewed are deleted
32
Partial Renewal ndash Paper
Given the potential delay between submitting a partial renewal and receiving a certificate of renewal registered owners are strongly encouraged to either renew near the expiry of the registration or renewal period or delete the goods or services not being renewed at the time of the partial renewal
33
Partial Renewal
Note that renewing a registration and subsequently deleting some goods or services is not considered a partial renewal as the prescribed renewal fee is based on the number of classes in the registration at the time of renewal
34
35
Extensions of Time
Extensions of time
36
The Branch has been looking for ways to render the end-to-end examination process more efficient and timely
One of the ways to reduce pendency in examination is to amend the practice with respect to the granting extensions of time
Extensions of time
37
Automatic or unwarranted extensions of time slow down the registration process considerably
To put things in perspective in 2018 the Office granted more than 11000 requests for extension of time at the examination stage alone
Extensions of time
38
The practice notice on extensions of time was amended on January 17 to remove the first six-month extension following an examinerrsquos report that was available for practically any reason
Extensions of time
39
Going forward the Office will generally not grant an extension of time to file a response to an examinerrsquos report unless the applicant can demonstrate exceptional circumstances justifying why it is not yet possible to file a proper response
Extensions of time
40
In an effort to implement a smooth transition from the previous practice the practice of not granting an extension of time to reply to an examinerrsquos report unless exceptional circumstances exist will only apply to trademark applications for which an examinerrsquos report has been issued on or after the publication date of this amended practice notice
Extensions of time
41
As a result for applications for which an examinerrsquos report has issued prior to the publication date of January 17 the Office will generally grant the applicant one (1) extension of time of up to a maximum of six (6) months to file a response to an examiners report if the request is justified
Extensions of time
42
The following are examples of what could amount to an exceptional circumstance that would justify an extension of time
Extensions of time No change
43
1 Recent change in trademark agentThere has been a very recent change in the appointed trademark agent and the agent requires time to become familiar with the file
No change
Extensions of time
44
2 Circumstances beyond the control of the person concernedExamples include illness accident death bankruptcy or other serious and unforeseen circumstances
No change
Extensions of time
45
3 TransferThere is a request pending at the Office to record or register the transfer of an application or registered trademark and said transfer would overcome a confusion objection
No change
Extensions of time
46
4 OppositionA co-pending and confusing trademark is the subject of a pending opposition proceeding
Amended
Extensions of time
47
5 Section 45A registered trademark cited as confusing is subject to a pending section 45 proceeding
Amended
Extensions of time
48
6 Official markThe applicant is in the process of actively negotiating a consent from the holder of an official mark
Amended
Extensions of time
49
7 Division of a Protocol applicationThe applicant has filed a request for the division in respect of Canada of the international registration on which the original Protocol application is based and is waiting on the International Bureau for notification that a divisional international registration has been created
No change
Extensions of time
50
8 Respond to an objection which could lead to a refusal under paragraphs 37(1)(b) (c) or (d) of the ActThe applicant requires more time to consider the objection and file a proper response The applicant may request an extension of time for this reason only once in the prosecution of the application
New
Extensions of time
51
9 Compile evidence of distinctiveness under subsection 32(1) of the ActThe applicant is in the process of compiling the sufficient evidence required to show that the trademark was distinctive at the filing date of the application The applicant may request an extension of time for this reason only once in the prosecution of the application New
Fee for Extensions of time
52
The $125 fee to request an extension of time is only required where a person applies to extend the deadline or period of time that is fixed by the Act or prescribed by the Regulations
Fee for Extensions of time
53
Therefore the fee is not required to request an extension of time to respond to an examinerrsquos report as the period of time to respond is not fixed in either the Act or its Regulations
Fee for Extensions of time
54
The fee is required to request an extension of time where the applicant is considered to be in default of the prosecution of the application as the period of time to respond to a default isfixed in section 34 of the Regulations
55
Appointment of a Trademark Agent or an Associate Trademark Agent
The temporary appointment of an agent or associate agent for the purpose of grouping the goods or services of a trademark registration according to the Nice Classification may be done using the Group Goods or Services (Nice Classification) e-service on CIPOrsquos website by including the details of temporary appointment and subsequent revocation in the ldquoClosing detailsrdquo section
56
Temporary Appointment
The undersigned has been appointed under subsection 22(1) of the Trademarks Regulations by the applicant or registered owner as trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as trademark agent is revoked under section 23 of the Trademarks Regulations
57
Temporary Appointment
The undersigned has been appointed under subsection 22(3) of the Trademarks Regulations by the trademark agent that resides in Canada appointed on the following trademark applications and registrations as associate trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as associate agent is revoked under section 23 of the Trademarks Regulations and the appointed trademark agent will remain of record
58
Temporary Appointment
Suggested wording for a temporary appointment and subsequent revocation can also be found in the relevant Practice Notice on the CIPO website
59
Temporary Appointment
60
Appointment of Agent on Transfers
The Office has been receiving requests for transfers under section 48 of the Actin which it is unclear on behalf of whom the request is initiated (ie the transferee or the transferor)
61
Appointment of Agent on Transfers
In view of the requirements in the Regulations on representation and the appointment of trademark agents all requests for transfers under section 48 of the Act must clearly indicate whether the transferee is appointing the agent who submitted the request
62
Appointment of Agent on Transfers
In view of the evidentiary requirements to record or register a transfer on the request of a transferee all requests must indicate which party is requesting the transfer
63
Appointment of Agent on Transfers
Similarly because it is unclear on behalf of whom the request is initiated it is often unclear whether the transferee is appointing an agent to represent them in respect of that trademark application or registration
64
Appointment of Agent on Transfers
Without a new appointment of agent if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
21
Renewal Process(Goods or services not classed at renewal)
22
The Inadvisable Stepsto Renewal
bull The registration is renewed and the base fee for one class is paid using the online renewal service and
bull on the same day the goods or services are grouped according to the Nice Classification using the online service and
bull on the same day the fees for the additional Nice classes (as calculated by the registered owner) are submitted by paper
23
Scenario 1
bull The registration is renewed and the base fee for one class is paid using the online renewal service and
bull on the same day the fees for additional Nice classes (as calculated by the registered owner) are submitted by paper however
bull the goods or services have not been grouped and classed
24
Scenario 2
A request to renew is filed by paper together with $400 (renewal fee under the previous Act) and $125 for an additional class (as calculated by the registered owner)
25
Scenario 3
Additional Renewal FeesThe Office is looking to add the ability to pay additional Nice class fees online at the same time as submitting the Nice Classification information
This should speed the process as the registered owner would not have to wait for an adjusted renewal fee notice to pay any outstanding fees
Note that the amount would not be calculated automatically as the final number of classes would not be finalized
26
Renewal process for registrations for which the goods or services have been grouped according to the classes of the Nice Classification system
27
Renewal Fees
Where goods or services of a registration are grouped and classed the registered owner must pay all of the fees set out in Items 14(a) or (b) of the Schedule to the Regulations
The fee is based on the number of classes in the registration at the time of renewal
28
Partial Renewal
29
Partial Renewal
The registration of a trademark may be renewed for some or all of the goods or services in respect of which the trademark is registered
If a registered owner requests the renewal of only some of the goods or services listed in the register for a registration (partial renewal) the registration will be renewed only for those goods and services listed in the renewal request
30
Partial Renewal - Online
A partial renewal can be submitted online only if the
bull Goods or services in respect of which the trademark is registered are grouped according to the classes of the Nice Classification
bull All the goods or services grouped in a class are being renewed and
bull the remaining goods or services are being deleted
31
Partial Renewal ndash Paper
If a partial renewal is not submitted online the Registrar will send a letter acknowledging receipt of the renewal fee
The particulars of the partial renewal will be available and the Registrar will issue a certificate of renewal only after the registration or previous renewal period has expired or the remaining goods or services not being renewed are deleted
32
Partial Renewal ndash Paper
Given the potential delay between submitting a partial renewal and receiving a certificate of renewal registered owners are strongly encouraged to either renew near the expiry of the registration or renewal period or delete the goods or services not being renewed at the time of the partial renewal
33
Partial Renewal
Note that renewing a registration and subsequently deleting some goods or services is not considered a partial renewal as the prescribed renewal fee is based on the number of classes in the registration at the time of renewal
34
35
Extensions of Time
Extensions of time
36
The Branch has been looking for ways to render the end-to-end examination process more efficient and timely
One of the ways to reduce pendency in examination is to amend the practice with respect to the granting extensions of time
Extensions of time
37
Automatic or unwarranted extensions of time slow down the registration process considerably
To put things in perspective in 2018 the Office granted more than 11000 requests for extension of time at the examination stage alone
Extensions of time
38
The practice notice on extensions of time was amended on January 17 to remove the first six-month extension following an examinerrsquos report that was available for practically any reason
Extensions of time
39
Going forward the Office will generally not grant an extension of time to file a response to an examinerrsquos report unless the applicant can demonstrate exceptional circumstances justifying why it is not yet possible to file a proper response
Extensions of time
40
In an effort to implement a smooth transition from the previous practice the practice of not granting an extension of time to reply to an examinerrsquos report unless exceptional circumstances exist will only apply to trademark applications for which an examinerrsquos report has been issued on or after the publication date of this amended practice notice
Extensions of time
41
As a result for applications for which an examinerrsquos report has issued prior to the publication date of January 17 the Office will generally grant the applicant one (1) extension of time of up to a maximum of six (6) months to file a response to an examiners report if the request is justified
Extensions of time
42
The following are examples of what could amount to an exceptional circumstance that would justify an extension of time
Extensions of time No change
43
1 Recent change in trademark agentThere has been a very recent change in the appointed trademark agent and the agent requires time to become familiar with the file
No change
Extensions of time
44
2 Circumstances beyond the control of the person concernedExamples include illness accident death bankruptcy or other serious and unforeseen circumstances
No change
Extensions of time
45
3 TransferThere is a request pending at the Office to record or register the transfer of an application or registered trademark and said transfer would overcome a confusion objection
No change
Extensions of time
46
4 OppositionA co-pending and confusing trademark is the subject of a pending opposition proceeding
Amended
Extensions of time
47
5 Section 45A registered trademark cited as confusing is subject to a pending section 45 proceeding
Amended
Extensions of time
48
6 Official markThe applicant is in the process of actively negotiating a consent from the holder of an official mark
Amended
Extensions of time
49
7 Division of a Protocol applicationThe applicant has filed a request for the division in respect of Canada of the international registration on which the original Protocol application is based and is waiting on the International Bureau for notification that a divisional international registration has been created
No change
Extensions of time
50
8 Respond to an objection which could lead to a refusal under paragraphs 37(1)(b) (c) or (d) of the ActThe applicant requires more time to consider the objection and file a proper response The applicant may request an extension of time for this reason only once in the prosecution of the application
New
Extensions of time
51
9 Compile evidence of distinctiveness under subsection 32(1) of the ActThe applicant is in the process of compiling the sufficient evidence required to show that the trademark was distinctive at the filing date of the application The applicant may request an extension of time for this reason only once in the prosecution of the application New
Fee for Extensions of time
52
The $125 fee to request an extension of time is only required where a person applies to extend the deadline or period of time that is fixed by the Act or prescribed by the Regulations
Fee for Extensions of time
53
Therefore the fee is not required to request an extension of time to respond to an examinerrsquos report as the period of time to respond is not fixed in either the Act or its Regulations
Fee for Extensions of time
54
The fee is required to request an extension of time where the applicant is considered to be in default of the prosecution of the application as the period of time to respond to a default isfixed in section 34 of the Regulations
55
Appointment of a Trademark Agent or an Associate Trademark Agent
The temporary appointment of an agent or associate agent for the purpose of grouping the goods or services of a trademark registration according to the Nice Classification may be done using the Group Goods or Services (Nice Classification) e-service on CIPOrsquos website by including the details of temporary appointment and subsequent revocation in the ldquoClosing detailsrdquo section
56
Temporary Appointment
The undersigned has been appointed under subsection 22(1) of the Trademarks Regulations by the applicant or registered owner as trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as trademark agent is revoked under section 23 of the Trademarks Regulations
57
Temporary Appointment
The undersigned has been appointed under subsection 22(3) of the Trademarks Regulations by the trademark agent that resides in Canada appointed on the following trademark applications and registrations as associate trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as associate agent is revoked under section 23 of the Trademarks Regulations and the appointed trademark agent will remain of record
58
Temporary Appointment
Suggested wording for a temporary appointment and subsequent revocation can also be found in the relevant Practice Notice on the CIPO website
59
Temporary Appointment
60
Appointment of Agent on Transfers
The Office has been receiving requests for transfers under section 48 of the Actin which it is unclear on behalf of whom the request is initiated (ie the transferee or the transferor)
61
Appointment of Agent on Transfers
In view of the requirements in the Regulations on representation and the appointment of trademark agents all requests for transfers under section 48 of the Act must clearly indicate whether the transferee is appointing the agent who submitted the request
62
Appointment of Agent on Transfers
In view of the evidentiary requirements to record or register a transfer on the request of a transferee all requests must indicate which party is requesting the transfer
63
Appointment of Agent on Transfers
Similarly because it is unclear on behalf of whom the request is initiated it is often unclear whether the transferee is appointing an agent to represent them in respect of that trademark application or registration
64
Appointment of Agent on Transfers
Without a new appointment of agent if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
22
The Inadvisable Stepsto Renewal
bull The registration is renewed and the base fee for one class is paid using the online renewal service and
bull on the same day the goods or services are grouped according to the Nice Classification using the online service and
bull on the same day the fees for the additional Nice classes (as calculated by the registered owner) are submitted by paper
23
Scenario 1
bull The registration is renewed and the base fee for one class is paid using the online renewal service and
bull on the same day the fees for additional Nice classes (as calculated by the registered owner) are submitted by paper however
bull the goods or services have not been grouped and classed
24
Scenario 2
A request to renew is filed by paper together with $400 (renewal fee under the previous Act) and $125 for an additional class (as calculated by the registered owner)
25
Scenario 3
Additional Renewal FeesThe Office is looking to add the ability to pay additional Nice class fees online at the same time as submitting the Nice Classification information
This should speed the process as the registered owner would not have to wait for an adjusted renewal fee notice to pay any outstanding fees
Note that the amount would not be calculated automatically as the final number of classes would not be finalized
26
Renewal process for registrations for which the goods or services have been grouped according to the classes of the Nice Classification system
27
Renewal Fees
Where goods or services of a registration are grouped and classed the registered owner must pay all of the fees set out in Items 14(a) or (b) of the Schedule to the Regulations
The fee is based on the number of classes in the registration at the time of renewal
28
Partial Renewal
29
Partial Renewal
The registration of a trademark may be renewed for some or all of the goods or services in respect of which the trademark is registered
If a registered owner requests the renewal of only some of the goods or services listed in the register for a registration (partial renewal) the registration will be renewed only for those goods and services listed in the renewal request
30
Partial Renewal - Online
A partial renewal can be submitted online only if the
bull Goods or services in respect of which the trademark is registered are grouped according to the classes of the Nice Classification
bull All the goods or services grouped in a class are being renewed and
bull the remaining goods or services are being deleted
31
Partial Renewal ndash Paper
If a partial renewal is not submitted online the Registrar will send a letter acknowledging receipt of the renewal fee
The particulars of the partial renewal will be available and the Registrar will issue a certificate of renewal only after the registration or previous renewal period has expired or the remaining goods or services not being renewed are deleted
32
Partial Renewal ndash Paper
Given the potential delay between submitting a partial renewal and receiving a certificate of renewal registered owners are strongly encouraged to either renew near the expiry of the registration or renewal period or delete the goods or services not being renewed at the time of the partial renewal
33
Partial Renewal
Note that renewing a registration and subsequently deleting some goods or services is not considered a partial renewal as the prescribed renewal fee is based on the number of classes in the registration at the time of renewal
34
35
Extensions of Time
Extensions of time
36
The Branch has been looking for ways to render the end-to-end examination process more efficient and timely
One of the ways to reduce pendency in examination is to amend the practice with respect to the granting extensions of time
Extensions of time
37
Automatic or unwarranted extensions of time slow down the registration process considerably
To put things in perspective in 2018 the Office granted more than 11000 requests for extension of time at the examination stage alone
Extensions of time
38
The practice notice on extensions of time was amended on January 17 to remove the first six-month extension following an examinerrsquos report that was available for practically any reason
Extensions of time
39
Going forward the Office will generally not grant an extension of time to file a response to an examinerrsquos report unless the applicant can demonstrate exceptional circumstances justifying why it is not yet possible to file a proper response
Extensions of time
40
In an effort to implement a smooth transition from the previous practice the practice of not granting an extension of time to reply to an examinerrsquos report unless exceptional circumstances exist will only apply to trademark applications for which an examinerrsquos report has been issued on or after the publication date of this amended practice notice
Extensions of time
41
As a result for applications for which an examinerrsquos report has issued prior to the publication date of January 17 the Office will generally grant the applicant one (1) extension of time of up to a maximum of six (6) months to file a response to an examiners report if the request is justified
Extensions of time
42
The following are examples of what could amount to an exceptional circumstance that would justify an extension of time
Extensions of time No change
43
1 Recent change in trademark agentThere has been a very recent change in the appointed trademark agent and the agent requires time to become familiar with the file
No change
Extensions of time
44
2 Circumstances beyond the control of the person concernedExamples include illness accident death bankruptcy or other serious and unforeseen circumstances
No change
Extensions of time
45
3 TransferThere is a request pending at the Office to record or register the transfer of an application or registered trademark and said transfer would overcome a confusion objection
No change
Extensions of time
46
4 OppositionA co-pending and confusing trademark is the subject of a pending opposition proceeding
Amended
Extensions of time
47
5 Section 45A registered trademark cited as confusing is subject to a pending section 45 proceeding
Amended
Extensions of time
48
6 Official markThe applicant is in the process of actively negotiating a consent from the holder of an official mark
Amended
Extensions of time
49
7 Division of a Protocol applicationThe applicant has filed a request for the division in respect of Canada of the international registration on which the original Protocol application is based and is waiting on the International Bureau for notification that a divisional international registration has been created
No change
Extensions of time
50
8 Respond to an objection which could lead to a refusal under paragraphs 37(1)(b) (c) or (d) of the ActThe applicant requires more time to consider the objection and file a proper response The applicant may request an extension of time for this reason only once in the prosecution of the application
New
Extensions of time
51
9 Compile evidence of distinctiveness under subsection 32(1) of the ActThe applicant is in the process of compiling the sufficient evidence required to show that the trademark was distinctive at the filing date of the application The applicant may request an extension of time for this reason only once in the prosecution of the application New
Fee for Extensions of time
52
The $125 fee to request an extension of time is only required where a person applies to extend the deadline or period of time that is fixed by the Act or prescribed by the Regulations
Fee for Extensions of time
53
Therefore the fee is not required to request an extension of time to respond to an examinerrsquos report as the period of time to respond is not fixed in either the Act or its Regulations
Fee for Extensions of time
54
The fee is required to request an extension of time where the applicant is considered to be in default of the prosecution of the application as the period of time to respond to a default isfixed in section 34 of the Regulations
55
Appointment of a Trademark Agent or an Associate Trademark Agent
The temporary appointment of an agent or associate agent for the purpose of grouping the goods or services of a trademark registration according to the Nice Classification may be done using the Group Goods or Services (Nice Classification) e-service on CIPOrsquos website by including the details of temporary appointment and subsequent revocation in the ldquoClosing detailsrdquo section
56
Temporary Appointment
The undersigned has been appointed under subsection 22(1) of the Trademarks Regulations by the applicant or registered owner as trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as trademark agent is revoked under section 23 of the Trademarks Regulations
57
Temporary Appointment
The undersigned has been appointed under subsection 22(3) of the Trademarks Regulations by the trademark agent that resides in Canada appointed on the following trademark applications and registrations as associate trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as associate agent is revoked under section 23 of the Trademarks Regulations and the appointed trademark agent will remain of record
58
Temporary Appointment
Suggested wording for a temporary appointment and subsequent revocation can also be found in the relevant Practice Notice on the CIPO website
59
Temporary Appointment
60
Appointment of Agent on Transfers
The Office has been receiving requests for transfers under section 48 of the Actin which it is unclear on behalf of whom the request is initiated (ie the transferee or the transferor)
61
Appointment of Agent on Transfers
In view of the requirements in the Regulations on representation and the appointment of trademark agents all requests for transfers under section 48 of the Act must clearly indicate whether the transferee is appointing the agent who submitted the request
62
Appointment of Agent on Transfers
In view of the evidentiary requirements to record or register a transfer on the request of a transferee all requests must indicate which party is requesting the transfer
63
Appointment of Agent on Transfers
Similarly because it is unclear on behalf of whom the request is initiated it is often unclear whether the transferee is appointing an agent to represent them in respect of that trademark application or registration
64
Appointment of Agent on Transfers
Without a new appointment of agent if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
bull The registration is renewed and the base fee for one class is paid using the online renewal service and
bull on the same day the goods or services are grouped according to the Nice Classification using the online service and
bull on the same day the fees for the additional Nice classes (as calculated by the registered owner) are submitted by paper
23
Scenario 1
bull The registration is renewed and the base fee for one class is paid using the online renewal service and
bull on the same day the fees for additional Nice classes (as calculated by the registered owner) are submitted by paper however
bull the goods or services have not been grouped and classed
24
Scenario 2
A request to renew is filed by paper together with $400 (renewal fee under the previous Act) and $125 for an additional class (as calculated by the registered owner)
25
Scenario 3
Additional Renewal FeesThe Office is looking to add the ability to pay additional Nice class fees online at the same time as submitting the Nice Classification information
This should speed the process as the registered owner would not have to wait for an adjusted renewal fee notice to pay any outstanding fees
Note that the amount would not be calculated automatically as the final number of classes would not be finalized
26
Renewal process for registrations for which the goods or services have been grouped according to the classes of the Nice Classification system
27
Renewal Fees
Where goods or services of a registration are grouped and classed the registered owner must pay all of the fees set out in Items 14(a) or (b) of the Schedule to the Regulations
The fee is based on the number of classes in the registration at the time of renewal
28
Partial Renewal
29
Partial Renewal
The registration of a trademark may be renewed for some or all of the goods or services in respect of which the trademark is registered
If a registered owner requests the renewal of only some of the goods or services listed in the register for a registration (partial renewal) the registration will be renewed only for those goods and services listed in the renewal request
30
Partial Renewal - Online
A partial renewal can be submitted online only if the
bull Goods or services in respect of which the trademark is registered are grouped according to the classes of the Nice Classification
bull All the goods or services grouped in a class are being renewed and
bull the remaining goods or services are being deleted
31
Partial Renewal ndash Paper
If a partial renewal is not submitted online the Registrar will send a letter acknowledging receipt of the renewal fee
The particulars of the partial renewal will be available and the Registrar will issue a certificate of renewal only after the registration or previous renewal period has expired or the remaining goods or services not being renewed are deleted
32
Partial Renewal ndash Paper
Given the potential delay between submitting a partial renewal and receiving a certificate of renewal registered owners are strongly encouraged to either renew near the expiry of the registration or renewal period or delete the goods or services not being renewed at the time of the partial renewal
33
Partial Renewal
Note that renewing a registration and subsequently deleting some goods or services is not considered a partial renewal as the prescribed renewal fee is based on the number of classes in the registration at the time of renewal
34
35
Extensions of Time
Extensions of time
36
The Branch has been looking for ways to render the end-to-end examination process more efficient and timely
One of the ways to reduce pendency in examination is to amend the practice with respect to the granting extensions of time
Extensions of time
37
Automatic or unwarranted extensions of time slow down the registration process considerably
To put things in perspective in 2018 the Office granted more than 11000 requests for extension of time at the examination stage alone
Extensions of time
38
The practice notice on extensions of time was amended on January 17 to remove the first six-month extension following an examinerrsquos report that was available for practically any reason
Extensions of time
39
Going forward the Office will generally not grant an extension of time to file a response to an examinerrsquos report unless the applicant can demonstrate exceptional circumstances justifying why it is not yet possible to file a proper response
Extensions of time
40
In an effort to implement a smooth transition from the previous practice the practice of not granting an extension of time to reply to an examinerrsquos report unless exceptional circumstances exist will only apply to trademark applications for which an examinerrsquos report has been issued on or after the publication date of this amended practice notice
Extensions of time
41
As a result for applications for which an examinerrsquos report has issued prior to the publication date of January 17 the Office will generally grant the applicant one (1) extension of time of up to a maximum of six (6) months to file a response to an examiners report if the request is justified
Extensions of time
42
The following are examples of what could amount to an exceptional circumstance that would justify an extension of time
Extensions of time No change
43
1 Recent change in trademark agentThere has been a very recent change in the appointed trademark agent and the agent requires time to become familiar with the file
No change
Extensions of time
44
2 Circumstances beyond the control of the person concernedExamples include illness accident death bankruptcy or other serious and unforeseen circumstances
No change
Extensions of time
45
3 TransferThere is a request pending at the Office to record or register the transfer of an application or registered trademark and said transfer would overcome a confusion objection
No change
Extensions of time
46
4 OppositionA co-pending and confusing trademark is the subject of a pending opposition proceeding
Amended
Extensions of time
47
5 Section 45A registered trademark cited as confusing is subject to a pending section 45 proceeding
Amended
Extensions of time
48
6 Official markThe applicant is in the process of actively negotiating a consent from the holder of an official mark
Amended
Extensions of time
49
7 Division of a Protocol applicationThe applicant has filed a request for the division in respect of Canada of the international registration on which the original Protocol application is based and is waiting on the International Bureau for notification that a divisional international registration has been created
No change
Extensions of time
50
8 Respond to an objection which could lead to a refusal under paragraphs 37(1)(b) (c) or (d) of the ActThe applicant requires more time to consider the objection and file a proper response The applicant may request an extension of time for this reason only once in the prosecution of the application
New
Extensions of time
51
9 Compile evidence of distinctiveness under subsection 32(1) of the ActThe applicant is in the process of compiling the sufficient evidence required to show that the trademark was distinctive at the filing date of the application The applicant may request an extension of time for this reason only once in the prosecution of the application New
Fee for Extensions of time
52
The $125 fee to request an extension of time is only required where a person applies to extend the deadline or period of time that is fixed by the Act or prescribed by the Regulations
Fee for Extensions of time
53
Therefore the fee is not required to request an extension of time to respond to an examinerrsquos report as the period of time to respond is not fixed in either the Act or its Regulations
Fee for Extensions of time
54
The fee is required to request an extension of time where the applicant is considered to be in default of the prosecution of the application as the period of time to respond to a default isfixed in section 34 of the Regulations
55
Appointment of a Trademark Agent or an Associate Trademark Agent
The temporary appointment of an agent or associate agent for the purpose of grouping the goods or services of a trademark registration according to the Nice Classification may be done using the Group Goods or Services (Nice Classification) e-service on CIPOrsquos website by including the details of temporary appointment and subsequent revocation in the ldquoClosing detailsrdquo section
56
Temporary Appointment
The undersigned has been appointed under subsection 22(1) of the Trademarks Regulations by the applicant or registered owner as trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as trademark agent is revoked under section 23 of the Trademarks Regulations
57
Temporary Appointment
The undersigned has been appointed under subsection 22(3) of the Trademarks Regulations by the trademark agent that resides in Canada appointed on the following trademark applications and registrations as associate trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as associate agent is revoked under section 23 of the Trademarks Regulations and the appointed trademark agent will remain of record
58
Temporary Appointment
Suggested wording for a temporary appointment and subsequent revocation can also be found in the relevant Practice Notice on the CIPO website
59
Temporary Appointment
60
Appointment of Agent on Transfers
The Office has been receiving requests for transfers under section 48 of the Actin which it is unclear on behalf of whom the request is initiated (ie the transferee or the transferor)
61
Appointment of Agent on Transfers
In view of the requirements in the Regulations on representation and the appointment of trademark agents all requests for transfers under section 48 of the Act must clearly indicate whether the transferee is appointing the agent who submitted the request
62
Appointment of Agent on Transfers
In view of the evidentiary requirements to record or register a transfer on the request of a transferee all requests must indicate which party is requesting the transfer
63
Appointment of Agent on Transfers
Similarly because it is unclear on behalf of whom the request is initiated it is often unclear whether the transferee is appointing an agent to represent them in respect of that trademark application or registration
64
Appointment of Agent on Transfers
Without a new appointment of agent if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
bull The registration is renewed and the base fee for one class is paid using the online renewal service and
bull on the same day the fees for additional Nice classes (as calculated by the registered owner) are submitted by paper however
bull the goods or services have not been grouped and classed
24
Scenario 2
A request to renew is filed by paper together with $400 (renewal fee under the previous Act) and $125 for an additional class (as calculated by the registered owner)
25
Scenario 3
Additional Renewal FeesThe Office is looking to add the ability to pay additional Nice class fees online at the same time as submitting the Nice Classification information
This should speed the process as the registered owner would not have to wait for an adjusted renewal fee notice to pay any outstanding fees
Note that the amount would not be calculated automatically as the final number of classes would not be finalized
26
Renewal process for registrations for which the goods or services have been grouped according to the classes of the Nice Classification system
27
Renewal Fees
Where goods or services of a registration are grouped and classed the registered owner must pay all of the fees set out in Items 14(a) or (b) of the Schedule to the Regulations
The fee is based on the number of classes in the registration at the time of renewal
28
Partial Renewal
29
Partial Renewal
The registration of a trademark may be renewed for some or all of the goods or services in respect of which the trademark is registered
If a registered owner requests the renewal of only some of the goods or services listed in the register for a registration (partial renewal) the registration will be renewed only for those goods and services listed in the renewal request
30
Partial Renewal - Online
A partial renewal can be submitted online only if the
bull Goods or services in respect of which the trademark is registered are grouped according to the classes of the Nice Classification
bull All the goods or services grouped in a class are being renewed and
bull the remaining goods or services are being deleted
31
Partial Renewal ndash Paper
If a partial renewal is not submitted online the Registrar will send a letter acknowledging receipt of the renewal fee
The particulars of the partial renewal will be available and the Registrar will issue a certificate of renewal only after the registration or previous renewal period has expired or the remaining goods or services not being renewed are deleted
32
Partial Renewal ndash Paper
Given the potential delay between submitting a partial renewal and receiving a certificate of renewal registered owners are strongly encouraged to either renew near the expiry of the registration or renewal period or delete the goods or services not being renewed at the time of the partial renewal
33
Partial Renewal
Note that renewing a registration and subsequently deleting some goods or services is not considered a partial renewal as the prescribed renewal fee is based on the number of classes in the registration at the time of renewal
34
35
Extensions of Time
Extensions of time
36
The Branch has been looking for ways to render the end-to-end examination process more efficient and timely
One of the ways to reduce pendency in examination is to amend the practice with respect to the granting extensions of time
Extensions of time
37
Automatic or unwarranted extensions of time slow down the registration process considerably
To put things in perspective in 2018 the Office granted more than 11000 requests for extension of time at the examination stage alone
Extensions of time
38
The practice notice on extensions of time was amended on January 17 to remove the first six-month extension following an examinerrsquos report that was available for practically any reason
Extensions of time
39
Going forward the Office will generally not grant an extension of time to file a response to an examinerrsquos report unless the applicant can demonstrate exceptional circumstances justifying why it is not yet possible to file a proper response
Extensions of time
40
In an effort to implement a smooth transition from the previous practice the practice of not granting an extension of time to reply to an examinerrsquos report unless exceptional circumstances exist will only apply to trademark applications for which an examinerrsquos report has been issued on or after the publication date of this amended practice notice
Extensions of time
41
As a result for applications for which an examinerrsquos report has issued prior to the publication date of January 17 the Office will generally grant the applicant one (1) extension of time of up to a maximum of six (6) months to file a response to an examiners report if the request is justified
Extensions of time
42
The following are examples of what could amount to an exceptional circumstance that would justify an extension of time
Extensions of time No change
43
1 Recent change in trademark agentThere has been a very recent change in the appointed trademark agent and the agent requires time to become familiar with the file
No change
Extensions of time
44
2 Circumstances beyond the control of the person concernedExamples include illness accident death bankruptcy or other serious and unforeseen circumstances
No change
Extensions of time
45
3 TransferThere is a request pending at the Office to record or register the transfer of an application or registered trademark and said transfer would overcome a confusion objection
No change
Extensions of time
46
4 OppositionA co-pending and confusing trademark is the subject of a pending opposition proceeding
Amended
Extensions of time
47
5 Section 45A registered trademark cited as confusing is subject to a pending section 45 proceeding
Amended
Extensions of time
48
6 Official markThe applicant is in the process of actively negotiating a consent from the holder of an official mark
Amended
Extensions of time
49
7 Division of a Protocol applicationThe applicant has filed a request for the division in respect of Canada of the international registration on which the original Protocol application is based and is waiting on the International Bureau for notification that a divisional international registration has been created
No change
Extensions of time
50
8 Respond to an objection which could lead to a refusal under paragraphs 37(1)(b) (c) or (d) of the ActThe applicant requires more time to consider the objection and file a proper response The applicant may request an extension of time for this reason only once in the prosecution of the application
New
Extensions of time
51
9 Compile evidence of distinctiveness under subsection 32(1) of the ActThe applicant is in the process of compiling the sufficient evidence required to show that the trademark was distinctive at the filing date of the application The applicant may request an extension of time for this reason only once in the prosecution of the application New
Fee for Extensions of time
52
The $125 fee to request an extension of time is only required where a person applies to extend the deadline or period of time that is fixed by the Act or prescribed by the Regulations
Fee for Extensions of time
53
Therefore the fee is not required to request an extension of time to respond to an examinerrsquos report as the period of time to respond is not fixed in either the Act or its Regulations
Fee for Extensions of time
54
The fee is required to request an extension of time where the applicant is considered to be in default of the prosecution of the application as the period of time to respond to a default isfixed in section 34 of the Regulations
55
Appointment of a Trademark Agent or an Associate Trademark Agent
The temporary appointment of an agent or associate agent for the purpose of grouping the goods or services of a trademark registration according to the Nice Classification may be done using the Group Goods or Services (Nice Classification) e-service on CIPOrsquos website by including the details of temporary appointment and subsequent revocation in the ldquoClosing detailsrdquo section
56
Temporary Appointment
The undersigned has been appointed under subsection 22(1) of the Trademarks Regulations by the applicant or registered owner as trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as trademark agent is revoked under section 23 of the Trademarks Regulations
57
Temporary Appointment
The undersigned has been appointed under subsection 22(3) of the Trademarks Regulations by the trademark agent that resides in Canada appointed on the following trademark applications and registrations as associate trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as associate agent is revoked under section 23 of the Trademarks Regulations and the appointed trademark agent will remain of record
58
Temporary Appointment
Suggested wording for a temporary appointment and subsequent revocation can also be found in the relevant Practice Notice on the CIPO website
59
Temporary Appointment
60
Appointment of Agent on Transfers
The Office has been receiving requests for transfers under section 48 of the Actin which it is unclear on behalf of whom the request is initiated (ie the transferee or the transferor)
61
Appointment of Agent on Transfers
In view of the requirements in the Regulations on representation and the appointment of trademark agents all requests for transfers under section 48 of the Act must clearly indicate whether the transferee is appointing the agent who submitted the request
62
Appointment of Agent on Transfers
In view of the evidentiary requirements to record or register a transfer on the request of a transferee all requests must indicate which party is requesting the transfer
63
Appointment of Agent on Transfers
Similarly because it is unclear on behalf of whom the request is initiated it is often unclear whether the transferee is appointing an agent to represent them in respect of that trademark application or registration
64
Appointment of Agent on Transfers
Without a new appointment of agent if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
A request to renew is filed by paper together with $400 (renewal fee under the previous Act) and $125 for an additional class (as calculated by the registered owner)
25
Scenario 3
Additional Renewal FeesThe Office is looking to add the ability to pay additional Nice class fees online at the same time as submitting the Nice Classification information
This should speed the process as the registered owner would not have to wait for an adjusted renewal fee notice to pay any outstanding fees
Note that the amount would not be calculated automatically as the final number of classes would not be finalized
26
Renewal process for registrations for which the goods or services have been grouped according to the classes of the Nice Classification system
27
Renewal Fees
Where goods or services of a registration are grouped and classed the registered owner must pay all of the fees set out in Items 14(a) or (b) of the Schedule to the Regulations
The fee is based on the number of classes in the registration at the time of renewal
28
Partial Renewal
29
Partial Renewal
The registration of a trademark may be renewed for some or all of the goods or services in respect of which the trademark is registered
If a registered owner requests the renewal of only some of the goods or services listed in the register for a registration (partial renewal) the registration will be renewed only for those goods and services listed in the renewal request
30
Partial Renewal - Online
A partial renewal can be submitted online only if the
bull Goods or services in respect of which the trademark is registered are grouped according to the classes of the Nice Classification
bull All the goods or services grouped in a class are being renewed and
bull the remaining goods or services are being deleted
31
Partial Renewal ndash Paper
If a partial renewal is not submitted online the Registrar will send a letter acknowledging receipt of the renewal fee
The particulars of the partial renewal will be available and the Registrar will issue a certificate of renewal only after the registration or previous renewal period has expired or the remaining goods or services not being renewed are deleted
32
Partial Renewal ndash Paper
Given the potential delay between submitting a partial renewal and receiving a certificate of renewal registered owners are strongly encouraged to either renew near the expiry of the registration or renewal period or delete the goods or services not being renewed at the time of the partial renewal
33
Partial Renewal
Note that renewing a registration and subsequently deleting some goods or services is not considered a partial renewal as the prescribed renewal fee is based on the number of classes in the registration at the time of renewal
34
35
Extensions of Time
Extensions of time
36
The Branch has been looking for ways to render the end-to-end examination process more efficient and timely
One of the ways to reduce pendency in examination is to amend the practice with respect to the granting extensions of time
Extensions of time
37
Automatic or unwarranted extensions of time slow down the registration process considerably
To put things in perspective in 2018 the Office granted more than 11000 requests for extension of time at the examination stage alone
Extensions of time
38
The practice notice on extensions of time was amended on January 17 to remove the first six-month extension following an examinerrsquos report that was available for practically any reason
Extensions of time
39
Going forward the Office will generally not grant an extension of time to file a response to an examinerrsquos report unless the applicant can demonstrate exceptional circumstances justifying why it is not yet possible to file a proper response
Extensions of time
40
In an effort to implement a smooth transition from the previous practice the practice of not granting an extension of time to reply to an examinerrsquos report unless exceptional circumstances exist will only apply to trademark applications for which an examinerrsquos report has been issued on or after the publication date of this amended practice notice
Extensions of time
41
As a result for applications for which an examinerrsquos report has issued prior to the publication date of January 17 the Office will generally grant the applicant one (1) extension of time of up to a maximum of six (6) months to file a response to an examiners report if the request is justified
Extensions of time
42
The following are examples of what could amount to an exceptional circumstance that would justify an extension of time
Extensions of time No change
43
1 Recent change in trademark agentThere has been a very recent change in the appointed trademark agent and the agent requires time to become familiar with the file
No change
Extensions of time
44
2 Circumstances beyond the control of the person concernedExamples include illness accident death bankruptcy or other serious and unforeseen circumstances
No change
Extensions of time
45
3 TransferThere is a request pending at the Office to record or register the transfer of an application or registered trademark and said transfer would overcome a confusion objection
No change
Extensions of time
46
4 OppositionA co-pending and confusing trademark is the subject of a pending opposition proceeding
Amended
Extensions of time
47
5 Section 45A registered trademark cited as confusing is subject to a pending section 45 proceeding
Amended
Extensions of time
48
6 Official markThe applicant is in the process of actively negotiating a consent from the holder of an official mark
Amended
Extensions of time
49
7 Division of a Protocol applicationThe applicant has filed a request for the division in respect of Canada of the international registration on which the original Protocol application is based and is waiting on the International Bureau for notification that a divisional international registration has been created
No change
Extensions of time
50
8 Respond to an objection which could lead to a refusal under paragraphs 37(1)(b) (c) or (d) of the ActThe applicant requires more time to consider the objection and file a proper response The applicant may request an extension of time for this reason only once in the prosecution of the application
New
Extensions of time
51
9 Compile evidence of distinctiveness under subsection 32(1) of the ActThe applicant is in the process of compiling the sufficient evidence required to show that the trademark was distinctive at the filing date of the application The applicant may request an extension of time for this reason only once in the prosecution of the application New
Fee for Extensions of time
52
The $125 fee to request an extension of time is only required where a person applies to extend the deadline or period of time that is fixed by the Act or prescribed by the Regulations
Fee for Extensions of time
53
Therefore the fee is not required to request an extension of time to respond to an examinerrsquos report as the period of time to respond is not fixed in either the Act or its Regulations
Fee for Extensions of time
54
The fee is required to request an extension of time where the applicant is considered to be in default of the prosecution of the application as the period of time to respond to a default isfixed in section 34 of the Regulations
55
Appointment of a Trademark Agent or an Associate Trademark Agent
The temporary appointment of an agent or associate agent for the purpose of grouping the goods or services of a trademark registration according to the Nice Classification may be done using the Group Goods or Services (Nice Classification) e-service on CIPOrsquos website by including the details of temporary appointment and subsequent revocation in the ldquoClosing detailsrdquo section
56
Temporary Appointment
The undersigned has been appointed under subsection 22(1) of the Trademarks Regulations by the applicant or registered owner as trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as trademark agent is revoked under section 23 of the Trademarks Regulations
57
Temporary Appointment
The undersigned has been appointed under subsection 22(3) of the Trademarks Regulations by the trademark agent that resides in Canada appointed on the following trademark applications and registrations as associate trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as associate agent is revoked under section 23 of the Trademarks Regulations and the appointed trademark agent will remain of record
58
Temporary Appointment
Suggested wording for a temporary appointment and subsequent revocation can also be found in the relevant Practice Notice on the CIPO website
59
Temporary Appointment
60
Appointment of Agent on Transfers
The Office has been receiving requests for transfers under section 48 of the Actin which it is unclear on behalf of whom the request is initiated (ie the transferee or the transferor)
61
Appointment of Agent on Transfers
In view of the requirements in the Regulations on representation and the appointment of trademark agents all requests for transfers under section 48 of the Act must clearly indicate whether the transferee is appointing the agent who submitted the request
62
Appointment of Agent on Transfers
In view of the evidentiary requirements to record or register a transfer on the request of a transferee all requests must indicate which party is requesting the transfer
63
Appointment of Agent on Transfers
Similarly because it is unclear on behalf of whom the request is initiated it is often unclear whether the transferee is appointing an agent to represent them in respect of that trademark application or registration
64
Appointment of Agent on Transfers
Without a new appointment of agent if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
Additional Renewal FeesThe Office is looking to add the ability to pay additional Nice class fees online at the same time as submitting the Nice Classification information
This should speed the process as the registered owner would not have to wait for an adjusted renewal fee notice to pay any outstanding fees
Note that the amount would not be calculated automatically as the final number of classes would not be finalized
26
Renewal process for registrations for which the goods or services have been grouped according to the classes of the Nice Classification system
27
Renewal Fees
Where goods or services of a registration are grouped and classed the registered owner must pay all of the fees set out in Items 14(a) or (b) of the Schedule to the Regulations
The fee is based on the number of classes in the registration at the time of renewal
28
Partial Renewal
29
Partial Renewal
The registration of a trademark may be renewed for some or all of the goods or services in respect of which the trademark is registered
If a registered owner requests the renewal of only some of the goods or services listed in the register for a registration (partial renewal) the registration will be renewed only for those goods and services listed in the renewal request
30
Partial Renewal - Online
A partial renewal can be submitted online only if the
bull Goods or services in respect of which the trademark is registered are grouped according to the classes of the Nice Classification
bull All the goods or services grouped in a class are being renewed and
bull the remaining goods or services are being deleted
31
Partial Renewal ndash Paper
If a partial renewal is not submitted online the Registrar will send a letter acknowledging receipt of the renewal fee
The particulars of the partial renewal will be available and the Registrar will issue a certificate of renewal only after the registration or previous renewal period has expired or the remaining goods or services not being renewed are deleted
32
Partial Renewal ndash Paper
Given the potential delay between submitting a partial renewal and receiving a certificate of renewal registered owners are strongly encouraged to either renew near the expiry of the registration or renewal period or delete the goods or services not being renewed at the time of the partial renewal
33
Partial Renewal
Note that renewing a registration and subsequently deleting some goods or services is not considered a partial renewal as the prescribed renewal fee is based on the number of classes in the registration at the time of renewal
34
35
Extensions of Time
Extensions of time
36
The Branch has been looking for ways to render the end-to-end examination process more efficient and timely
One of the ways to reduce pendency in examination is to amend the practice with respect to the granting extensions of time
Extensions of time
37
Automatic or unwarranted extensions of time slow down the registration process considerably
To put things in perspective in 2018 the Office granted more than 11000 requests for extension of time at the examination stage alone
Extensions of time
38
The practice notice on extensions of time was amended on January 17 to remove the first six-month extension following an examinerrsquos report that was available for practically any reason
Extensions of time
39
Going forward the Office will generally not grant an extension of time to file a response to an examinerrsquos report unless the applicant can demonstrate exceptional circumstances justifying why it is not yet possible to file a proper response
Extensions of time
40
In an effort to implement a smooth transition from the previous practice the practice of not granting an extension of time to reply to an examinerrsquos report unless exceptional circumstances exist will only apply to trademark applications for which an examinerrsquos report has been issued on or after the publication date of this amended practice notice
Extensions of time
41
As a result for applications for which an examinerrsquos report has issued prior to the publication date of January 17 the Office will generally grant the applicant one (1) extension of time of up to a maximum of six (6) months to file a response to an examiners report if the request is justified
Extensions of time
42
The following are examples of what could amount to an exceptional circumstance that would justify an extension of time
Extensions of time No change
43
1 Recent change in trademark agentThere has been a very recent change in the appointed trademark agent and the agent requires time to become familiar with the file
No change
Extensions of time
44
2 Circumstances beyond the control of the person concernedExamples include illness accident death bankruptcy or other serious and unforeseen circumstances
No change
Extensions of time
45
3 TransferThere is a request pending at the Office to record or register the transfer of an application or registered trademark and said transfer would overcome a confusion objection
No change
Extensions of time
46
4 OppositionA co-pending and confusing trademark is the subject of a pending opposition proceeding
Amended
Extensions of time
47
5 Section 45A registered trademark cited as confusing is subject to a pending section 45 proceeding
Amended
Extensions of time
48
6 Official markThe applicant is in the process of actively negotiating a consent from the holder of an official mark
Amended
Extensions of time
49
7 Division of a Protocol applicationThe applicant has filed a request for the division in respect of Canada of the international registration on which the original Protocol application is based and is waiting on the International Bureau for notification that a divisional international registration has been created
No change
Extensions of time
50
8 Respond to an objection which could lead to a refusal under paragraphs 37(1)(b) (c) or (d) of the ActThe applicant requires more time to consider the objection and file a proper response The applicant may request an extension of time for this reason only once in the prosecution of the application
New
Extensions of time
51
9 Compile evidence of distinctiveness under subsection 32(1) of the ActThe applicant is in the process of compiling the sufficient evidence required to show that the trademark was distinctive at the filing date of the application The applicant may request an extension of time for this reason only once in the prosecution of the application New
Fee for Extensions of time
52
The $125 fee to request an extension of time is only required where a person applies to extend the deadline or period of time that is fixed by the Act or prescribed by the Regulations
Fee for Extensions of time
53
Therefore the fee is not required to request an extension of time to respond to an examinerrsquos report as the period of time to respond is not fixed in either the Act or its Regulations
Fee for Extensions of time
54
The fee is required to request an extension of time where the applicant is considered to be in default of the prosecution of the application as the period of time to respond to a default isfixed in section 34 of the Regulations
55
Appointment of a Trademark Agent or an Associate Trademark Agent
The temporary appointment of an agent or associate agent for the purpose of grouping the goods or services of a trademark registration according to the Nice Classification may be done using the Group Goods or Services (Nice Classification) e-service on CIPOrsquos website by including the details of temporary appointment and subsequent revocation in the ldquoClosing detailsrdquo section
56
Temporary Appointment
The undersigned has been appointed under subsection 22(1) of the Trademarks Regulations by the applicant or registered owner as trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as trademark agent is revoked under section 23 of the Trademarks Regulations
57
Temporary Appointment
The undersigned has been appointed under subsection 22(3) of the Trademarks Regulations by the trademark agent that resides in Canada appointed on the following trademark applications and registrations as associate trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as associate agent is revoked under section 23 of the Trademarks Regulations and the appointed trademark agent will remain of record
58
Temporary Appointment
Suggested wording for a temporary appointment and subsequent revocation can also be found in the relevant Practice Notice on the CIPO website
59
Temporary Appointment
60
Appointment of Agent on Transfers
The Office has been receiving requests for transfers under section 48 of the Actin which it is unclear on behalf of whom the request is initiated (ie the transferee or the transferor)
61
Appointment of Agent on Transfers
In view of the requirements in the Regulations on representation and the appointment of trademark agents all requests for transfers under section 48 of the Act must clearly indicate whether the transferee is appointing the agent who submitted the request
62
Appointment of Agent on Transfers
In view of the evidentiary requirements to record or register a transfer on the request of a transferee all requests must indicate which party is requesting the transfer
63
Appointment of Agent on Transfers
Similarly because it is unclear on behalf of whom the request is initiated it is often unclear whether the transferee is appointing an agent to represent them in respect of that trademark application or registration
64
Appointment of Agent on Transfers
Without a new appointment of agent if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
Renewal process for registrations for which the goods or services have been grouped according to the classes of the Nice Classification system
27
Renewal Fees
Where goods or services of a registration are grouped and classed the registered owner must pay all of the fees set out in Items 14(a) or (b) of the Schedule to the Regulations
The fee is based on the number of classes in the registration at the time of renewal
28
Partial Renewal
29
Partial Renewal
The registration of a trademark may be renewed for some or all of the goods or services in respect of which the trademark is registered
If a registered owner requests the renewal of only some of the goods or services listed in the register for a registration (partial renewal) the registration will be renewed only for those goods and services listed in the renewal request
30
Partial Renewal - Online
A partial renewal can be submitted online only if the
bull Goods or services in respect of which the trademark is registered are grouped according to the classes of the Nice Classification
bull All the goods or services grouped in a class are being renewed and
bull the remaining goods or services are being deleted
31
Partial Renewal ndash Paper
If a partial renewal is not submitted online the Registrar will send a letter acknowledging receipt of the renewal fee
The particulars of the partial renewal will be available and the Registrar will issue a certificate of renewal only after the registration or previous renewal period has expired or the remaining goods or services not being renewed are deleted
32
Partial Renewal ndash Paper
Given the potential delay between submitting a partial renewal and receiving a certificate of renewal registered owners are strongly encouraged to either renew near the expiry of the registration or renewal period or delete the goods or services not being renewed at the time of the partial renewal
33
Partial Renewal
Note that renewing a registration and subsequently deleting some goods or services is not considered a partial renewal as the prescribed renewal fee is based on the number of classes in the registration at the time of renewal
34
35
Extensions of Time
Extensions of time
36
The Branch has been looking for ways to render the end-to-end examination process more efficient and timely
One of the ways to reduce pendency in examination is to amend the practice with respect to the granting extensions of time
Extensions of time
37
Automatic or unwarranted extensions of time slow down the registration process considerably
To put things in perspective in 2018 the Office granted more than 11000 requests for extension of time at the examination stage alone
Extensions of time
38
The practice notice on extensions of time was amended on January 17 to remove the first six-month extension following an examinerrsquos report that was available for practically any reason
Extensions of time
39
Going forward the Office will generally not grant an extension of time to file a response to an examinerrsquos report unless the applicant can demonstrate exceptional circumstances justifying why it is not yet possible to file a proper response
Extensions of time
40
In an effort to implement a smooth transition from the previous practice the practice of not granting an extension of time to reply to an examinerrsquos report unless exceptional circumstances exist will only apply to trademark applications for which an examinerrsquos report has been issued on or after the publication date of this amended practice notice
Extensions of time
41
As a result for applications for which an examinerrsquos report has issued prior to the publication date of January 17 the Office will generally grant the applicant one (1) extension of time of up to a maximum of six (6) months to file a response to an examiners report if the request is justified
Extensions of time
42
The following are examples of what could amount to an exceptional circumstance that would justify an extension of time
Extensions of time No change
43
1 Recent change in trademark agentThere has been a very recent change in the appointed trademark agent and the agent requires time to become familiar with the file
No change
Extensions of time
44
2 Circumstances beyond the control of the person concernedExamples include illness accident death bankruptcy or other serious and unforeseen circumstances
No change
Extensions of time
45
3 TransferThere is a request pending at the Office to record or register the transfer of an application or registered trademark and said transfer would overcome a confusion objection
No change
Extensions of time
46
4 OppositionA co-pending and confusing trademark is the subject of a pending opposition proceeding
Amended
Extensions of time
47
5 Section 45A registered trademark cited as confusing is subject to a pending section 45 proceeding
Amended
Extensions of time
48
6 Official markThe applicant is in the process of actively negotiating a consent from the holder of an official mark
Amended
Extensions of time
49
7 Division of a Protocol applicationThe applicant has filed a request for the division in respect of Canada of the international registration on which the original Protocol application is based and is waiting on the International Bureau for notification that a divisional international registration has been created
No change
Extensions of time
50
8 Respond to an objection which could lead to a refusal under paragraphs 37(1)(b) (c) or (d) of the ActThe applicant requires more time to consider the objection and file a proper response The applicant may request an extension of time for this reason only once in the prosecution of the application
New
Extensions of time
51
9 Compile evidence of distinctiveness under subsection 32(1) of the ActThe applicant is in the process of compiling the sufficient evidence required to show that the trademark was distinctive at the filing date of the application The applicant may request an extension of time for this reason only once in the prosecution of the application New
Fee for Extensions of time
52
The $125 fee to request an extension of time is only required where a person applies to extend the deadline or period of time that is fixed by the Act or prescribed by the Regulations
Fee for Extensions of time
53
Therefore the fee is not required to request an extension of time to respond to an examinerrsquos report as the period of time to respond is not fixed in either the Act or its Regulations
Fee for Extensions of time
54
The fee is required to request an extension of time where the applicant is considered to be in default of the prosecution of the application as the period of time to respond to a default isfixed in section 34 of the Regulations
55
Appointment of a Trademark Agent or an Associate Trademark Agent
The temporary appointment of an agent or associate agent for the purpose of grouping the goods or services of a trademark registration according to the Nice Classification may be done using the Group Goods or Services (Nice Classification) e-service on CIPOrsquos website by including the details of temporary appointment and subsequent revocation in the ldquoClosing detailsrdquo section
56
Temporary Appointment
The undersigned has been appointed under subsection 22(1) of the Trademarks Regulations by the applicant or registered owner as trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as trademark agent is revoked under section 23 of the Trademarks Regulations
57
Temporary Appointment
The undersigned has been appointed under subsection 22(3) of the Trademarks Regulations by the trademark agent that resides in Canada appointed on the following trademark applications and registrations as associate trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as associate agent is revoked under section 23 of the Trademarks Regulations and the appointed trademark agent will remain of record
58
Temporary Appointment
Suggested wording for a temporary appointment and subsequent revocation can also be found in the relevant Practice Notice on the CIPO website
59
Temporary Appointment
60
Appointment of Agent on Transfers
The Office has been receiving requests for transfers under section 48 of the Actin which it is unclear on behalf of whom the request is initiated (ie the transferee or the transferor)
61
Appointment of Agent on Transfers
In view of the requirements in the Regulations on representation and the appointment of trademark agents all requests for transfers under section 48 of the Act must clearly indicate whether the transferee is appointing the agent who submitted the request
62
Appointment of Agent on Transfers
In view of the evidentiary requirements to record or register a transfer on the request of a transferee all requests must indicate which party is requesting the transfer
63
Appointment of Agent on Transfers
Similarly because it is unclear on behalf of whom the request is initiated it is often unclear whether the transferee is appointing an agent to represent them in respect of that trademark application or registration
64
Appointment of Agent on Transfers
Without a new appointment of agent if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
Renewal Fees
Where goods or services of a registration are grouped and classed the registered owner must pay all of the fees set out in Items 14(a) or (b) of the Schedule to the Regulations
The fee is based on the number of classes in the registration at the time of renewal
28
Partial Renewal
29
Partial Renewal
The registration of a trademark may be renewed for some or all of the goods or services in respect of which the trademark is registered
If a registered owner requests the renewal of only some of the goods or services listed in the register for a registration (partial renewal) the registration will be renewed only for those goods and services listed in the renewal request
30
Partial Renewal - Online
A partial renewal can be submitted online only if the
bull Goods or services in respect of which the trademark is registered are grouped according to the classes of the Nice Classification
bull All the goods or services grouped in a class are being renewed and
bull the remaining goods or services are being deleted
31
Partial Renewal ndash Paper
If a partial renewal is not submitted online the Registrar will send a letter acknowledging receipt of the renewal fee
The particulars of the partial renewal will be available and the Registrar will issue a certificate of renewal only after the registration or previous renewal period has expired or the remaining goods or services not being renewed are deleted
32
Partial Renewal ndash Paper
Given the potential delay between submitting a partial renewal and receiving a certificate of renewal registered owners are strongly encouraged to either renew near the expiry of the registration or renewal period or delete the goods or services not being renewed at the time of the partial renewal
33
Partial Renewal
Note that renewing a registration and subsequently deleting some goods or services is not considered a partial renewal as the prescribed renewal fee is based on the number of classes in the registration at the time of renewal
34
35
Extensions of Time
Extensions of time
36
The Branch has been looking for ways to render the end-to-end examination process more efficient and timely
One of the ways to reduce pendency in examination is to amend the practice with respect to the granting extensions of time
Extensions of time
37
Automatic or unwarranted extensions of time slow down the registration process considerably
To put things in perspective in 2018 the Office granted more than 11000 requests for extension of time at the examination stage alone
Extensions of time
38
The practice notice on extensions of time was amended on January 17 to remove the first six-month extension following an examinerrsquos report that was available for practically any reason
Extensions of time
39
Going forward the Office will generally not grant an extension of time to file a response to an examinerrsquos report unless the applicant can demonstrate exceptional circumstances justifying why it is not yet possible to file a proper response
Extensions of time
40
In an effort to implement a smooth transition from the previous practice the practice of not granting an extension of time to reply to an examinerrsquos report unless exceptional circumstances exist will only apply to trademark applications for which an examinerrsquos report has been issued on or after the publication date of this amended practice notice
Extensions of time
41
As a result for applications for which an examinerrsquos report has issued prior to the publication date of January 17 the Office will generally grant the applicant one (1) extension of time of up to a maximum of six (6) months to file a response to an examiners report if the request is justified
Extensions of time
42
The following are examples of what could amount to an exceptional circumstance that would justify an extension of time
Extensions of time No change
43
1 Recent change in trademark agentThere has been a very recent change in the appointed trademark agent and the agent requires time to become familiar with the file
No change
Extensions of time
44
2 Circumstances beyond the control of the person concernedExamples include illness accident death bankruptcy or other serious and unforeseen circumstances
No change
Extensions of time
45
3 TransferThere is a request pending at the Office to record or register the transfer of an application or registered trademark and said transfer would overcome a confusion objection
No change
Extensions of time
46
4 OppositionA co-pending and confusing trademark is the subject of a pending opposition proceeding
Amended
Extensions of time
47
5 Section 45A registered trademark cited as confusing is subject to a pending section 45 proceeding
Amended
Extensions of time
48
6 Official markThe applicant is in the process of actively negotiating a consent from the holder of an official mark
Amended
Extensions of time
49
7 Division of a Protocol applicationThe applicant has filed a request for the division in respect of Canada of the international registration on which the original Protocol application is based and is waiting on the International Bureau for notification that a divisional international registration has been created
No change
Extensions of time
50
8 Respond to an objection which could lead to a refusal under paragraphs 37(1)(b) (c) or (d) of the ActThe applicant requires more time to consider the objection and file a proper response The applicant may request an extension of time for this reason only once in the prosecution of the application
New
Extensions of time
51
9 Compile evidence of distinctiveness under subsection 32(1) of the ActThe applicant is in the process of compiling the sufficient evidence required to show that the trademark was distinctive at the filing date of the application The applicant may request an extension of time for this reason only once in the prosecution of the application New
Fee for Extensions of time
52
The $125 fee to request an extension of time is only required where a person applies to extend the deadline or period of time that is fixed by the Act or prescribed by the Regulations
Fee for Extensions of time
53
Therefore the fee is not required to request an extension of time to respond to an examinerrsquos report as the period of time to respond is not fixed in either the Act or its Regulations
Fee for Extensions of time
54
The fee is required to request an extension of time where the applicant is considered to be in default of the prosecution of the application as the period of time to respond to a default isfixed in section 34 of the Regulations
55
Appointment of a Trademark Agent or an Associate Trademark Agent
The temporary appointment of an agent or associate agent for the purpose of grouping the goods or services of a trademark registration according to the Nice Classification may be done using the Group Goods or Services (Nice Classification) e-service on CIPOrsquos website by including the details of temporary appointment and subsequent revocation in the ldquoClosing detailsrdquo section
56
Temporary Appointment
The undersigned has been appointed under subsection 22(1) of the Trademarks Regulations by the applicant or registered owner as trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as trademark agent is revoked under section 23 of the Trademarks Regulations
57
Temporary Appointment
The undersigned has been appointed under subsection 22(3) of the Trademarks Regulations by the trademark agent that resides in Canada appointed on the following trademark applications and registrations as associate trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as associate agent is revoked under section 23 of the Trademarks Regulations and the appointed trademark agent will remain of record
58
Temporary Appointment
Suggested wording for a temporary appointment and subsequent revocation can also be found in the relevant Practice Notice on the CIPO website
59
Temporary Appointment
60
Appointment of Agent on Transfers
The Office has been receiving requests for transfers under section 48 of the Actin which it is unclear on behalf of whom the request is initiated (ie the transferee or the transferor)
61
Appointment of Agent on Transfers
In view of the requirements in the Regulations on representation and the appointment of trademark agents all requests for transfers under section 48 of the Act must clearly indicate whether the transferee is appointing the agent who submitted the request
62
Appointment of Agent on Transfers
In view of the evidentiary requirements to record or register a transfer on the request of a transferee all requests must indicate which party is requesting the transfer
63
Appointment of Agent on Transfers
Similarly because it is unclear on behalf of whom the request is initiated it is often unclear whether the transferee is appointing an agent to represent them in respect of that trademark application or registration
64
Appointment of Agent on Transfers
Without a new appointment of agent if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
Partial Renewal
29
Partial Renewal
The registration of a trademark may be renewed for some or all of the goods or services in respect of which the trademark is registered
If a registered owner requests the renewal of only some of the goods or services listed in the register for a registration (partial renewal) the registration will be renewed only for those goods and services listed in the renewal request
30
Partial Renewal - Online
A partial renewal can be submitted online only if the
bull Goods or services in respect of which the trademark is registered are grouped according to the classes of the Nice Classification
bull All the goods or services grouped in a class are being renewed and
bull the remaining goods or services are being deleted
31
Partial Renewal ndash Paper
If a partial renewal is not submitted online the Registrar will send a letter acknowledging receipt of the renewal fee
The particulars of the partial renewal will be available and the Registrar will issue a certificate of renewal only after the registration or previous renewal period has expired or the remaining goods or services not being renewed are deleted
32
Partial Renewal ndash Paper
Given the potential delay between submitting a partial renewal and receiving a certificate of renewal registered owners are strongly encouraged to either renew near the expiry of the registration or renewal period or delete the goods or services not being renewed at the time of the partial renewal
33
Partial Renewal
Note that renewing a registration and subsequently deleting some goods or services is not considered a partial renewal as the prescribed renewal fee is based on the number of classes in the registration at the time of renewal
34
35
Extensions of Time
Extensions of time
36
The Branch has been looking for ways to render the end-to-end examination process more efficient and timely
One of the ways to reduce pendency in examination is to amend the practice with respect to the granting extensions of time
Extensions of time
37
Automatic or unwarranted extensions of time slow down the registration process considerably
To put things in perspective in 2018 the Office granted more than 11000 requests for extension of time at the examination stage alone
Extensions of time
38
The practice notice on extensions of time was amended on January 17 to remove the first six-month extension following an examinerrsquos report that was available for practically any reason
Extensions of time
39
Going forward the Office will generally not grant an extension of time to file a response to an examinerrsquos report unless the applicant can demonstrate exceptional circumstances justifying why it is not yet possible to file a proper response
Extensions of time
40
In an effort to implement a smooth transition from the previous practice the practice of not granting an extension of time to reply to an examinerrsquos report unless exceptional circumstances exist will only apply to trademark applications for which an examinerrsquos report has been issued on or after the publication date of this amended practice notice
Extensions of time
41
As a result for applications for which an examinerrsquos report has issued prior to the publication date of January 17 the Office will generally grant the applicant one (1) extension of time of up to a maximum of six (6) months to file a response to an examiners report if the request is justified
Extensions of time
42
The following are examples of what could amount to an exceptional circumstance that would justify an extension of time
Extensions of time No change
43
1 Recent change in trademark agentThere has been a very recent change in the appointed trademark agent and the agent requires time to become familiar with the file
No change
Extensions of time
44
2 Circumstances beyond the control of the person concernedExamples include illness accident death bankruptcy or other serious and unforeseen circumstances
No change
Extensions of time
45
3 TransferThere is a request pending at the Office to record or register the transfer of an application or registered trademark and said transfer would overcome a confusion objection
No change
Extensions of time
46
4 OppositionA co-pending and confusing trademark is the subject of a pending opposition proceeding
Amended
Extensions of time
47
5 Section 45A registered trademark cited as confusing is subject to a pending section 45 proceeding
Amended
Extensions of time
48
6 Official markThe applicant is in the process of actively negotiating a consent from the holder of an official mark
Amended
Extensions of time
49
7 Division of a Protocol applicationThe applicant has filed a request for the division in respect of Canada of the international registration on which the original Protocol application is based and is waiting on the International Bureau for notification that a divisional international registration has been created
No change
Extensions of time
50
8 Respond to an objection which could lead to a refusal under paragraphs 37(1)(b) (c) or (d) of the ActThe applicant requires more time to consider the objection and file a proper response The applicant may request an extension of time for this reason only once in the prosecution of the application
New
Extensions of time
51
9 Compile evidence of distinctiveness under subsection 32(1) of the ActThe applicant is in the process of compiling the sufficient evidence required to show that the trademark was distinctive at the filing date of the application The applicant may request an extension of time for this reason only once in the prosecution of the application New
Fee for Extensions of time
52
The $125 fee to request an extension of time is only required where a person applies to extend the deadline or period of time that is fixed by the Act or prescribed by the Regulations
Fee for Extensions of time
53
Therefore the fee is not required to request an extension of time to respond to an examinerrsquos report as the period of time to respond is not fixed in either the Act or its Regulations
Fee for Extensions of time
54
The fee is required to request an extension of time where the applicant is considered to be in default of the prosecution of the application as the period of time to respond to a default isfixed in section 34 of the Regulations
55
Appointment of a Trademark Agent or an Associate Trademark Agent
The temporary appointment of an agent or associate agent for the purpose of grouping the goods or services of a trademark registration according to the Nice Classification may be done using the Group Goods or Services (Nice Classification) e-service on CIPOrsquos website by including the details of temporary appointment and subsequent revocation in the ldquoClosing detailsrdquo section
56
Temporary Appointment
The undersigned has been appointed under subsection 22(1) of the Trademarks Regulations by the applicant or registered owner as trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as trademark agent is revoked under section 23 of the Trademarks Regulations
57
Temporary Appointment
The undersigned has been appointed under subsection 22(3) of the Trademarks Regulations by the trademark agent that resides in Canada appointed on the following trademark applications and registrations as associate trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as associate agent is revoked under section 23 of the Trademarks Regulations and the appointed trademark agent will remain of record
58
Temporary Appointment
Suggested wording for a temporary appointment and subsequent revocation can also be found in the relevant Practice Notice on the CIPO website
59
Temporary Appointment
60
Appointment of Agent on Transfers
The Office has been receiving requests for transfers under section 48 of the Actin which it is unclear on behalf of whom the request is initiated (ie the transferee or the transferor)
61
Appointment of Agent on Transfers
In view of the requirements in the Regulations on representation and the appointment of trademark agents all requests for transfers under section 48 of the Act must clearly indicate whether the transferee is appointing the agent who submitted the request
62
Appointment of Agent on Transfers
In view of the evidentiary requirements to record or register a transfer on the request of a transferee all requests must indicate which party is requesting the transfer
63
Appointment of Agent on Transfers
Similarly because it is unclear on behalf of whom the request is initiated it is often unclear whether the transferee is appointing an agent to represent them in respect of that trademark application or registration
64
Appointment of Agent on Transfers
Without a new appointment of agent if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
Partial Renewal
The registration of a trademark may be renewed for some or all of the goods or services in respect of which the trademark is registered
If a registered owner requests the renewal of only some of the goods or services listed in the register for a registration (partial renewal) the registration will be renewed only for those goods and services listed in the renewal request
30
Partial Renewal - Online
A partial renewal can be submitted online only if the
bull Goods or services in respect of which the trademark is registered are grouped according to the classes of the Nice Classification
bull All the goods or services grouped in a class are being renewed and
bull the remaining goods or services are being deleted
31
Partial Renewal ndash Paper
If a partial renewal is not submitted online the Registrar will send a letter acknowledging receipt of the renewal fee
The particulars of the partial renewal will be available and the Registrar will issue a certificate of renewal only after the registration or previous renewal period has expired or the remaining goods or services not being renewed are deleted
32
Partial Renewal ndash Paper
Given the potential delay between submitting a partial renewal and receiving a certificate of renewal registered owners are strongly encouraged to either renew near the expiry of the registration or renewal period or delete the goods or services not being renewed at the time of the partial renewal
33
Partial Renewal
Note that renewing a registration and subsequently deleting some goods or services is not considered a partial renewal as the prescribed renewal fee is based on the number of classes in the registration at the time of renewal
34
35
Extensions of Time
Extensions of time
36
The Branch has been looking for ways to render the end-to-end examination process more efficient and timely
One of the ways to reduce pendency in examination is to amend the practice with respect to the granting extensions of time
Extensions of time
37
Automatic or unwarranted extensions of time slow down the registration process considerably
To put things in perspective in 2018 the Office granted more than 11000 requests for extension of time at the examination stage alone
Extensions of time
38
The practice notice on extensions of time was amended on January 17 to remove the first six-month extension following an examinerrsquos report that was available for practically any reason
Extensions of time
39
Going forward the Office will generally not grant an extension of time to file a response to an examinerrsquos report unless the applicant can demonstrate exceptional circumstances justifying why it is not yet possible to file a proper response
Extensions of time
40
In an effort to implement a smooth transition from the previous practice the practice of not granting an extension of time to reply to an examinerrsquos report unless exceptional circumstances exist will only apply to trademark applications for which an examinerrsquos report has been issued on or after the publication date of this amended practice notice
Extensions of time
41
As a result for applications for which an examinerrsquos report has issued prior to the publication date of January 17 the Office will generally grant the applicant one (1) extension of time of up to a maximum of six (6) months to file a response to an examiners report if the request is justified
Extensions of time
42
The following are examples of what could amount to an exceptional circumstance that would justify an extension of time
Extensions of time No change
43
1 Recent change in trademark agentThere has been a very recent change in the appointed trademark agent and the agent requires time to become familiar with the file
No change
Extensions of time
44
2 Circumstances beyond the control of the person concernedExamples include illness accident death bankruptcy or other serious and unforeseen circumstances
No change
Extensions of time
45
3 TransferThere is a request pending at the Office to record or register the transfer of an application or registered trademark and said transfer would overcome a confusion objection
No change
Extensions of time
46
4 OppositionA co-pending and confusing trademark is the subject of a pending opposition proceeding
Amended
Extensions of time
47
5 Section 45A registered trademark cited as confusing is subject to a pending section 45 proceeding
Amended
Extensions of time
48
6 Official markThe applicant is in the process of actively negotiating a consent from the holder of an official mark
Amended
Extensions of time
49
7 Division of a Protocol applicationThe applicant has filed a request for the division in respect of Canada of the international registration on which the original Protocol application is based and is waiting on the International Bureau for notification that a divisional international registration has been created
No change
Extensions of time
50
8 Respond to an objection which could lead to a refusal under paragraphs 37(1)(b) (c) or (d) of the ActThe applicant requires more time to consider the objection and file a proper response The applicant may request an extension of time for this reason only once in the prosecution of the application
New
Extensions of time
51
9 Compile evidence of distinctiveness under subsection 32(1) of the ActThe applicant is in the process of compiling the sufficient evidence required to show that the trademark was distinctive at the filing date of the application The applicant may request an extension of time for this reason only once in the prosecution of the application New
Fee for Extensions of time
52
The $125 fee to request an extension of time is only required where a person applies to extend the deadline or period of time that is fixed by the Act or prescribed by the Regulations
Fee for Extensions of time
53
Therefore the fee is not required to request an extension of time to respond to an examinerrsquos report as the period of time to respond is not fixed in either the Act or its Regulations
Fee for Extensions of time
54
The fee is required to request an extension of time where the applicant is considered to be in default of the prosecution of the application as the period of time to respond to a default isfixed in section 34 of the Regulations
55
Appointment of a Trademark Agent or an Associate Trademark Agent
The temporary appointment of an agent or associate agent for the purpose of grouping the goods or services of a trademark registration according to the Nice Classification may be done using the Group Goods or Services (Nice Classification) e-service on CIPOrsquos website by including the details of temporary appointment and subsequent revocation in the ldquoClosing detailsrdquo section
56
Temporary Appointment
The undersigned has been appointed under subsection 22(1) of the Trademarks Regulations by the applicant or registered owner as trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as trademark agent is revoked under section 23 of the Trademarks Regulations
57
Temporary Appointment
The undersigned has been appointed under subsection 22(3) of the Trademarks Regulations by the trademark agent that resides in Canada appointed on the following trademark applications and registrations as associate trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as associate agent is revoked under section 23 of the Trademarks Regulations and the appointed trademark agent will remain of record
58
Temporary Appointment
Suggested wording for a temporary appointment and subsequent revocation can also be found in the relevant Practice Notice on the CIPO website
59
Temporary Appointment
60
Appointment of Agent on Transfers
The Office has been receiving requests for transfers under section 48 of the Actin which it is unclear on behalf of whom the request is initiated (ie the transferee or the transferor)
61
Appointment of Agent on Transfers
In view of the requirements in the Regulations on representation and the appointment of trademark agents all requests for transfers under section 48 of the Act must clearly indicate whether the transferee is appointing the agent who submitted the request
62
Appointment of Agent on Transfers
In view of the evidentiary requirements to record or register a transfer on the request of a transferee all requests must indicate which party is requesting the transfer
63
Appointment of Agent on Transfers
Similarly because it is unclear on behalf of whom the request is initiated it is often unclear whether the transferee is appointing an agent to represent them in respect of that trademark application or registration
64
Appointment of Agent on Transfers
Without a new appointment of agent if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
Partial Renewal - Online
A partial renewal can be submitted online only if the
bull Goods or services in respect of which the trademark is registered are grouped according to the classes of the Nice Classification
bull All the goods or services grouped in a class are being renewed and
bull the remaining goods or services are being deleted
31
Partial Renewal ndash Paper
If a partial renewal is not submitted online the Registrar will send a letter acknowledging receipt of the renewal fee
The particulars of the partial renewal will be available and the Registrar will issue a certificate of renewal only after the registration or previous renewal period has expired or the remaining goods or services not being renewed are deleted
32
Partial Renewal ndash Paper
Given the potential delay between submitting a partial renewal and receiving a certificate of renewal registered owners are strongly encouraged to either renew near the expiry of the registration or renewal period or delete the goods or services not being renewed at the time of the partial renewal
33
Partial Renewal
Note that renewing a registration and subsequently deleting some goods or services is not considered a partial renewal as the prescribed renewal fee is based on the number of classes in the registration at the time of renewal
34
35
Extensions of Time
Extensions of time
36
The Branch has been looking for ways to render the end-to-end examination process more efficient and timely
One of the ways to reduce pendency in examination is to amend the practice with respect to the granting extensions of time
Extensions of time
37
Automatic or unwarranted extensions of time slow down the registration process considerably
To put things in perspective in 2018 the Office granted more than 11000 requests for extension of time at the examination stage alone
Extensions of time
38
The practice notice on extensions of time was amended on January 17 to remove the first six-month extension following an examinerrsquos report that was available for practically any reason
Extensions of time
39
Going forward the Office will generally not grant an extension of time to file a response to an examinerrsquos report unless the applicant can demonstrate exceptional circumstances justifying why it is not yet possible to file a proper response
Extensions of time
40
In an effort to implement a smooth transition from the previous practice the practice of not granting an extension of time to reply to an examinerrsquos report unless exceptional circumstances exist will only apply to trademark applications for which an examinerrsquos report has been issued on or after the publication date of this amended practice notice
Extensions of time
41
As a result for applications for which an examinerrsquos report has issued prior to the publication date of January 17 the Office will generally grant the applicant one (1) extension of time of up to a maximum of six (6) months to file a response to an examiners report if the request is justified
Extensions of time
42
The following are examples of what could amount to an exceptional circumstance that would justify an extension of time
Extensions of time No change
43
1 Recent change in trademark agentThere has been a very recent change in the appointed trademark agent and the agent requires time to become familiar with the file
No change
Extensions of time
44
2 Circumstances beyond the control of the person concernedExamples include illness accident death bankruptcy or other serious and unforeseen circumstances
No change
Extensions of time
45
3 TransferThere is a request pending at the Office to record or register the transfer of an application or registered trademark and said transfer would overcome a confusion objection
No change
Extensions of time
46
4 OppositionA co-pending and confusing trademark is the subject of a pending opposition proceeding
Amended
Extensions of time
47
5 Section 45A registered trademark cited as confusing is subject to a pending section 45 proceeding
Amended
Extensions of time
48
6 Official markThe applicant is in the process of actively negotiating a consent from the holder of an official mark
Amended
Extensions of time
49
7 Division of a Protocol applicationThe applicant has filed a request for the division in respect of Canada of the international registration on which the original Protocol application is based and is waiting on the International Bureau for notification that a divisional international registration has been created
No change
Extensions of time
50
8 Respond to an objection which could lead to a refusal under paragraphs 37(1)(b) (c) or (d) of the ActThe applicant requires more time to consider the objection and file a proper response The applicant may request an extension of time for this reason only once in the prosecution of the application
New
Extensions of time
51
9 Compile evidence of distinctiveness under subsection 32(1) of the ActThe applicant is in the process of compiling the sufficient evidence required to show that the trademark was distinctive at the filing date of the application The applicant may request an extension of time for this reason only once in the prosecution of the application New
Fee for Extensions of time
52
The $125 fee to request an extension of time is only required where a person applies to extend the deadline or period of time that is fixed by the Act or prescribed by the Regulations
Fee for Extensions of time
53
Therefore the fee is not required to request an extension of time to respond to an examinerrsquos report as the period of time to respond is not fixed in either the Act or its Regulations
Fee for Extensions of time
54
The fee is required to request an extension of time where the applicant is considered to be in default of the prosecution of the application as the period of time to respond to a default isfixed in section 34 of the Regulations
55
Appointment of a Trademark Agent or an Associate Trademark Agent
The temporary appointment of an agent or associate agent for the purpose of grouping the goods or services of a trademark registration according to the Nice Classification may be done using the Group Goods or Services (Nice Classification) e-service on CIPOrsquos website by including the details of temporary appointment and subsequent revocation in the ldquoClosing detailsrdquo section
56
Temporary Appointment
The undersigned has been appointed under subsection 22(1) of the Trademarks Regulations by the applicant or registered owner as trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as trademark agent is revoked under section 23 of the Trademarks Regulations
57
Temporary Appointment
The undersigned has been appointed under subsection 22(3) of the Trademarks Regulations by the trademark agent that resides in Canada appointed on the following trademark applications and registrations as associate trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as associate agent is revoked under section 23 of the Trademarks Regulations and the appointed trademark agent will remain of record
58
Temporary Appointment
Suggested wording for a temporary appointment and subsequent revocation can also be found in the relevant Practice Notice on the CIPO website
59
Temporary Appointment
60
Appointment of Agent on Transfers
The Office has been receiving requests for transfers under section 48 of the Actin which it is unclear on behalf of whom the request is initiated (ie the transferee or the transferor)
61
Appointment of Agent on Transfers
In view of the requirements in the Regulations on representation and the appointment of trademark agents all requests for transfers under section 48 of the Act must clearly indicate whether the transferee is appointing the agent who submitted the request
62
Appointment of Agent on Transfers
In view of the evidentiary requirements to record or register a transfer on the request of a transferee all requests must indicate which party is requesting the transfer
63
Appointment of Agent on Transfers
Similarly because it is unclear on behalf of whom the request is initiated it is often unclear whether the transferee is appointing an agent to represent them in respect of that trademark application or registration
64
Appointment of Agent on Transfers
Without a new appointment of agent if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
Partial Renewal ndash Paper
If a partial renewal is not submitted online the Registrar will send a letter acknowledging receipt of the renewal fee
The particulars of the partial renewal will be available and the Registrar will issue a certificate of renewal only after the registration or previous renewal period has expired or the remaining goods or services not being renewed are deleted
32
Partial Renewal ndash Paper
Given the potential delay between submitting a partial renewal and receiving a certificate of renewal registered owners are strongly encouraged to either renew near the expiry of the registration or renewal period or delete the goods or services not being renewed at the time of the partial renewal
33
Partial Renewal
Note that renewing a registration and subsequently deleting some goods or services is not considered a partial renewal as the prescribed renewal fee is based on the number of classes in the registration at the time of renewal
34
35
Extensions of Time
Extensions of time
36
The Branch has been looking for ways to render the end-to-end examination process more efficient and timely
One of the ways to reduce pendency in examination is to amend the practice with respect to the granting extensions of time
Extensions of time
37
Automatic or unwarranted extensions of time slow down the registration process considerably
To put things in perspective in 2018 the Office granted more than 11000 requests for extension of time at the examination stage alone
Extensions of time
38
The practice notice on extensions of time was amended on January 17 to remove the first six-month extension following an examinerrsquos report that was available for practically any reason
Extensions of time
39
Going forward the Office will generally not grant an extension of time to file a response to an examinerrsquos report unless the applicant can demonstrate exceptional circumstances justifying why it is not yet possible to file a proper response
Extensions of time
40
In an effort to implement a smooth transition from the previous practice the practice of not granting an extension of time to reply to an examinerrsquos report unless exceptional circumstances exist will only apply to trademark applications for which an examinerrsquos report has been issued on or after the publication date of this amended practice notice
Extensions of time
41
As a result for applications for which an examinerrsquos report has issued prior to the publication date of January 17 the Office will generally grant the applicant one (1) extension of time of up to a maximum of six (6) months to file a response to an examiners report if the request is justified
Extensions of time
42
The following are examples of what could amount to an exceptional circumstance that would justify an extension of time
Extensions of time No change
43
1 Recent change in trademark agentThere has been a very recent change in the appointed trademark agent and the agent requires time to become familiar with the file
No change
Extensions of time
44
2 Circumstances beyond the control of the person concernedExamples include illness accident death bankruptcy or other serious and unforeseen circumstances
No change
Extensions of time
45
3 TransferThere is a request pending at the Office to record or register the transfer of an application or registered trademark and said transfer would overcome a confusion objection
No change
Extensions of time
46
4 OppositionA co-pending and confusing trademark is the subject of a pending opposition proceeding
Amended
Extensions of time
47
5 Section 45A registered trademark cited as confusing is subject to a pending section 45 proceeding
Amended
Extensions of time
48
6 Official markThe applicant is in the process of actively negotiating a consent from the holder of an official mark
Amended
Extensions of time
49
7 Division of a Protocol applicationThe applicant has filed a request for the division in respect of Canada of the international registration on which the original Protocol application is based and is waiting on the International Bureau for notification that a divisional international registration has been created
No change
Extensions of time
50
8 Respond to an objection which could lead to a refusal under paragraphs 37(1)(b) (c) or (d) of the ActThe applicant requires more time to consider the objection and file a proper response The applicant may request an extension of time for this reason only once in the prosecution of the application
New
Extensions of time
51
9 Compile evidence of distinctiveness under subsection 32(1) of the ActThe applicant is in the process of compiling the sufficient evidence required to show that the trademark was distinctive at the filing date of the application The applicant may request an extension of time for this reason only once in the prosecution of the application New
Fee for Extensions of time
52
The $125 fee to request an extension of time is only required where a person applies to extend the deadline or period of time that is fixed by the Act or prescribed by the Regulations
Fee for Extensions of time
53
Therefore the fee is not required to request an extension of time to respond to an examinerrsquos report as the period of time to respond is not fixed in either the Act or its Regulations
Fee for Extensions of time
54
The fee is required to request an extension of time where the applicant is considered to be in default of the prosecution of the application as the period of time to respond to a default isfixed in section 34 of the Regulations
55
Appointment of a Trademark Agent or an Associate Trademark Agent
The temporary appointment of an agent or associate agent for the purpose of grouping the goods or services of a trademark registration according to the Nice Classification may be done using the Group Goods or Services (Nice Classification) e-service on CIPOrsquos website by including the details of temporary appointment and subsequent revocation in the ldquoClosing detailsrdquo section
56
Temporary Appointment
The undersigned has been appointed under subsection 22(1) of the Trademarks Regulations by the applicant or registered owner as trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as trademark agent is revoked under section 23 of the Trademarks Regulations
57
Temporary Appointment
The undersigned has been appointed under subsection 22(3) of the Trademarks Regulations by the trademark agent that resides in Canada appointed on the following trademark applications and registrations as associate trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as associate agent is revoked under section 23 of the Trademarks Regulations and the appointed trademark agent will remain of record
58
Temporary Appointment
Suggested wording for a temporary appointment and subsequent revocation can also be found in the relevant Practice Notice on the CIPO website
59
Temporary Appointment
60
Appointment of Agent on Transfers
The Office has been receiving requests for transfers under section 48 of the Actin which it is unclear on behalf of whom the request is initiated (ie the transferee or the transferor)
61
Appointment of Agent on Transfers
In view of the requirements in the Regulations on representation and the appointment of trademark agents all requests for transfers under section 48 of the Act must clearly indicate whether the transferee is appointing the agent who submitted the request
62
Appointment of Agent on Transfers
In view of the evidentiary requirements to record or register a transfer on the request of a transferee all requests must indicate which party is requesting the transfer
63
Appointment of Agent on Transfers
Similarly because it is unclear on behalf of whom the request is initiated it is often unclear whether the transferee is appointing an agent to represent them in respect of that trademark application or registration
64
Appointment of Agent on Transfers
Without a new appointment of agent if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
Partial Renewal ndash Paper
Given the potential delay between submitting a partial renewal and receiving a certificate of renewal registered owners are strongly encouraged to either renew near the expiry of the registration or renewal period or delete the goods or services not being renewed at the time of the partial renewal
33
Partial Renewal
Note that renewing a registration and subsequently deleting some goods or services is not considered a partial renewal as the prescribed renewal fee is based on the number of classes in the registration at the time of renewal
34
35
Extensions of Time
Extensions of time
36
The Branch has been looking for ways to render the end-to-end examination process more efficient and timely
One of the ways to reduce pendency in examination is to amend the practice with respect to the granting extensions of time
Extensions of time
37
Automatic or unwarranted extensions of time slow down the registration process considerably
To put things in perspective in 2018 the Office granted more than 11000 requests for extension of time at the examination stage alone
Extensions of time
38
The practice notice on extensions of time was amended on January 17 to remove the first six-month extension following an examinerrsquos report that was available for practically any reason
Extensions of time
39
Going forward the Office will generally not grant an extension of time to file a response to an examinerrsquos report unless the applicant can demonstrate exceptional circumstances justifying why it is not yet possible to file a proper response
Extensions of time
40
In an effort to implement a smooth transition from the previous practice the practice of not granting an extension of time to reply to an examinerrsquos report unless exceptional circumstances exist will only apply to trademark applications for which an examinerrsquos report has been issued on or after the publication date of this amended practice notice
Extensions of time
41
As a result for applications for which an examinerrsquos report has issued prior to the publication date of January 17 the Office will generally grant the applicant one (1) extension of time of up to a maximum of six (6) months to file a response to an examiners report if the request is justified
Extensions of time
42
The following are examples of what could amount to an exceptional circumstance that would justify an extension of time
Extensions of time No change
43
1 Recent change in trademark agentThere has been a very recent change in the appointed trademark agent and the agent requires time to become familiar with the file
No change
Extensions of time
44
2 Circumstances beyond the control of the person concernedExamples include illness accident death bankruptcy or other serious and unforeseen circumstances
No change
Extensions of time
45
3 TransferThere is a request pending at the Office to record or register the transfer of an application or registered trademark and said transfer would overcome a confusion objection
No change
Extensions of time
46
4 OppositionA co-pending and confusing trademark is the subject of a pending opposition proceeding
Amended
Extensions of time
47
5 Section 45A registered trademark cited as confusing is subject to a pending section 45 proceeding
Amended
Extensions of time
48
6 Official markThe applicant is in the process of actively negotiating a consent from the holder of an official mark
Amended
Extensions of time
49
7 Division of a Protocol applicationThe applicant has filed a request for the division in respect of Canada of the international registration on which the original Protocol application is based and is waiting on the International Bureau for notification that a divisional international registration has been created
No change
Extensions of time
50
8 Respond to an objection which could lead to a refusal under paragraphs 37(1)(b) (c) or (d) of the ActThe applicant requires more time to consider the objection and file a proper response The applicant may request an extension of time for this reason only once in the prosecution of the application
New
Extensions of time
51
9 Compile evidence of distinctiveness under subsection 32(1) of the ActThe applicant is in the process of compiling the sufficient evidence required to show that the trademark was distinctive at the filing date of the application The applicant may request an extension of time for this reason only once in the prosecution of the application New
Fee for Extensions of time
52
The $125 fee to request an extension of time is only required where a person applies to extend the deadline or period of time that is fixed by the Act or prescribed by the Regulations
Fee for Extensions of time
53
Therefore the fee is not required to request an extension of time to respond to an examinerrsquos report as the period of time to respond is not fixed in either the Act or its Regulations
Fee for Extensions of time
54
The fee is required to request an extension of time where the applicant is considered to be in default of the prosecution of the application as the period of time to respond to a default isfixed in section 34 of the Regulations
55
Appointment of a Trademark Agent or an Associate Trademark Agent
The temporary appointment of an agent or associate agent for the purpose of grouping the goods or services of a trademark registration according to the Nice Classification may be done using the Group Goods or Services (Nice Classification) e-service on CIPOrsquos website by including the details of temporary appointment and subsequent revocation in the ldquoClosing detailsrdquo section
56
Temporary Appointment
The undersigned has been appointed under subsection 22(1) of the Trademarks Regulations by the applicant or registered owner as trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as trademark agent is revoked under section 23 of the Trademarks Regulations
57
Temporary Appointment
The undersigned has been appointed under subsection 22(3) of the Trademarks Regulations by the trademark agent that resides in Canada appointed on the following trademark applications and registrations as associate trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as associate agent is revoked under section 23 of the Trademarks Regulations and the appointed trademark agent will remain of record
58
Temporary Appointment
Suggested wording for a temporary appointment and subsequent revocation can also be found in the relevant Practice Notice on the CIPO website
59
Temporary Appointment
60
Appointment of Agent on Transfers
The Office has been receiving requests for transfers under section 48 of the Actin which it is unclear on behalf of whom the request is initiated (ie the transferee or the transferor)
61
Appointment of Agent on Transfers
In view of the requirements in the Regulations on representation and the appointment of trademark agents all requests for transfers under section 48 of the Act must clearly indicate whether the transferee is appointing the agent who submitted the request
62
Appointment of Agent on Transfers
In view of the evidentiary requirements to record or register a transfer on the request of a transferee all requests must indicate which party is requesting the transfer
63
Appointment of Agent on Transfers
Similarly because it is unclear on behalf of whom the request is initiated it is often unclear whether the transferee is appointing an agent to represent them in respect of that trademark application or registration
64
Appointment of Agent on Transfers
Without a new appointment of agent if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
Partial Renewal
Note that renewing a registration and subsequently deleting some goods or services is not considered a partial renewal as the prescribed renewal fee is based on the number of classes in the registration at the time of renewal
34
35
Extensions of Time
Extensions of time
36
The Branch has been looking for ways to render the end-to-end examination process more efficient and timely
One of the ways to reduce pendency in examination is to amend the practice with respect to the granting extensions of time
Extensions of time
37
Automatic or unwarranted extensions of time slow down the registration process considerably
To put things in perspective in 2018 the Office granted more than 11000 requests for extension of time at the examination stage alone
Extensions of time
38
The practice notice on extensions of time was amended on January 17 to remove the first six-month extension following an examinerrsquos report that was available for practically any reason
Extensions of time
39
Going forward the Office will generally not grant an extension of time to file a response to an examinerrsquos report unless the applicant can demonstrate exceptional circumstances justifying why it is not yet possible to file a proper response
Extensions of time
40
In an effort to implement a smooth transition from the previous practice the practice of not granting an extension of time to reply to an examinerrsquos report unless exceptional circumstances exist will only apply to trademark applications for which an examinerrsquos report has been issued on or after the publication date of this amended practice notice
Extensions of time
41
As a result for applications for which an examinerrsquos report has issued prior to the publication date of January 17 the Office will generally grant the applicant one (1) extension of time of up to a maximum of six (6) months to file a response to an examiners report if the request is justified
Extensions of time
42
The following are examples of what could amount to an exceptional circumstance that would justify an extension of time
Extensions of time No change
43
1 Recent change in trademark agentThere has been a very recent change in the appointed trademark agent and the agent requires time to become familiar with the file
No change
Extensions of time
44
2 Circumstances beyond the control of the person concernedExamples include illness accident death bankruptcy or other serious and unforeseen circumstances
No change
Extensions of time
45
3 TransferThere is a request pending at the Office to record or register the transfer of an application or registered trademark and said transfer would overcome a confusion objection
No change
Extensions of time
46
4 OppositionA co-pending and confusing trademark is the subject of a pending opposition proceeding
Amended
Extensions of time
47
5 Section 45A registered trademark cited as confusing is subject to a pending section 45 proceeding
Amended
Extensions of time
48
6 Official markThe applicant is in the process of actively negotiating a consent from the holder of an official mark
Amended
Extensions of time
49
7 Division of a Protocol applicationThe applicant has filed a request for the division in respect of Canada of the international registration on which the original Protocol application is based and is waiting on the International Bureau for notification that a divisional international registration has been created
No change
Extensions of time
50
8 Respond to an objection which could lead to a refusal under paragraphs 37(1)(b) (c) or (d) of the ActThe applicant requires more time to consider the objection and file a proper response The applicant may request an extension of time for this reason only once in the prosecution of the application
New
Extensions of time
51
9 Compile evidence of distinctiveness under subsection 32(1) of the ActThe applicant is in the process of compiling the sufficient evidence required to show that the trademark was distinctive at the filing date of the application The applicant may request an extension of time for this reason only once in the prosecution of the application New
Fee for Extensions of time
52
The $125 fee to request an extension of time is only required where a person applies to extend the deadline or period of time that is fixed by the Act or prescribed by the Regulations
Fee for Extensions of time
53
Therefore the fee is not required to request an extension of time to respond to an examinerrsquos report as the period of time to respond is not fixed in either the Act or its Regulations
Fee for Extensions of time
54
The fee is required to request an extension of time where the applicant is considered to be in default of the prosecution of the application as the period of time to respond to a default isfixed in section 34 of the Regulations
55
Appointment of a Trademark Agent or an Associate Trademark Agent
The temporary appointment of an agent or associate agent for the purpose of grouping the goods or services of a trademark registration according to the Nice Classification may be done using the Group Goods or Services (Nice Classification) e-service on CIPOrsquos website by including the details of temporary appointment and subsequent revocation in the ldquoClosing detailsrdquo section
56
Temporary Appointment
The undersigned has been appointed under subsection 22(1) of the Trademarks Regulations by the applicant or registered owner as trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as trademark agent is revoked under section 23 of the Trademarks Regulations
57
Temporary Appointment
The undersigned has been appointed under subsection 22(3) of the Trademarks Regulations by the trademark agent that resides in Canada appointed on the following trademark applications and registrations as associate trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as associate agent is revoked under section 23 of the Trademarks Regulations and the appointed trademark agent will remain of record
58
Temporary Appointment
Suggested wording for a temporary appointment and subsequent revocation can also be found in the relevant Practice Notice on the CIPO website
59
Temporary Appointment
60
Appointment of Agent on Transfers
The Office has been receiving requests for transfers under section 48 of the Actin which it is unclear on behalf of whom the request is initiated (ie the transferee or the transferor)
61
Appointment of Agent on Transfers
In view of the requirements in the Regulations on representation and the appointment of trademark agents all requests for transfers under section 48 of the Act must clearly indicate whether the transferee is appointing the agent who submitted the request
62
Appointment of Agent on Transfers
In view of the evidentiary requirements to record or register a transfer on the request of a transferee all requests must indicate which party is requesting the transfer
63
Appointment of Agent on Transfers
Similarly because it is unclear on behalf of whom the request is initiated it is often unclear whether the transferee is appointing an agent to represent them in respect of that trademark application or registration
64
Appointment of Agent on Transfers
Without a new appointment of agent if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
35
Extensions of Time
Extensions of time
36
The Branch has been looking for ways to render the end-to-end examination process more efficient and timely
One of the ways to reduce pendency in examination is to amend the practice with respect to the granting extensions of time
Extensions of time
37
Automatic or unwarranted extensions of time slow down the registration process considerably
To put things in perspective in 2018 the Office granted more than 11000 requests for extension of time at the examination stage alone
Extensions of time
38
The practice notice on extensions of time was amended on January 17 to remove the first six-month extension following an examinerrsquos report that was available for practically any reason
Extensions of time
39
Going forward the Office will generally not grant an extension of time to file a response to an examinerrsquos report unless the applicant can demonstrate exceptional circumstances justifying why it is not yet possible to file a proper response
Extensions of time
40
In an effort to implement a smooth transition from the previous practice the practice of not granting an extension of time to reply to an examinerrsquos report unless exceptional circumstances exist will only apply to trademark applications for which an examinerrsquos report has been issued on or after the publication date of this amended practice notice
Extensions of time
41
As a result for applications for which an examinerrsquos report has issued prior to the publication date of January 17 the Office will generally grant the applicant one (1) extension of time of up to a maximum of six (6) months to file a response to an examiners report if the request is justified
Extensions of time
42
The following are examples of what could amount to an exceptional circumstance that would justify an extension of time
Extensions of time No change
43
1 Recent change in trademark agentThere has been a very recent change in the appointed trademark agent and the agent requires time to become familiar with the file
No change
Extensions of time
44
2 Circumstances beyond the control of the person concernedExamples include illness accident death bankruptcy or other serious and unforeseen circumstances
No change
Extensions of time
45
3 TransferThere is a request pending at the Office to record or register the transfer of an application or registered trademark and said transfer would overcome a confusion objection
No change
Extensions of time
46
4 OppositionA co-pending and confusing trademark is the subject of a pending opposition proceeding
Amended
Extensions of time
47
5 Section 45A registered trademark cited as confusing is subject to a pending section 45 proceeding
Amended
Extensions of time
48
6 Official markThe applicant is in the process of actively negotiating a consent from the holder of an official mark
Amended
Extensions of time
49
7 Division of a Protocol applicationThe applicant has filed a request for the division in respect of Canada of the international registration on which the original Protocol application is based and is waiting on the International Bureau for notification that a divisional international registration has been created
No change
Extensions of time
50
8 Respond to an objection which could lead to a refusal under paragraphs 37(1)(b) (c) or (d) of the ActThe applicant requires more time to consider the objection and file a proper response The applicant may request an extension of time for this reason only once in the prosecution of the application
New
Extensions of time
51
9 Compile evidence of distinctiveness under subsection 32(1) of the ActThe applicant is in the process of compiling the sufficient evidence required to show that the trademark was distinctive at the filing date of the application The applicant may request an extension of time for this reason only once in the prosecution of the application New
Fee for Extensions of time
52
The $125 fee to request an extension of time is only required where a person applies to extend the deadline or period of time that is fixed by the Act or prescribed by the Regulations
Fee for Extensions of time
53
Therefore the fee is not required to request an extension of time to respond to an examinerrsquos report as the period of time to respond is not fixed in either the Act or its Regulations
Fee for Extensions of time
54
The fee is required to request an extension of time where the applicant is considered to be in default of the prosecution of the application as the period of time to respond to a default isfixed in section 34 of the Regulations
55
Appointment of a Trademark Agent or an Associate Trademark Agent
The temporary appointment of an agent or associate agent for the purpose of grouping the goods or services of a trademark registration according to the Nice Classification may be done using the Group Goods or Services (Nice Classification) e-service on CIPOrsquos website by including the details of temporary appointment and subsequent revocation in the ldquoClosing detailsrdquo section
56
Temporary Appointment
The undersigned has been appointed under subsection 22(1) of the Trademarks Regulations by the applicant or registered owner as trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as trademark agent is revoked under section 23 of the Trademarks Regulations
57
Temporary Appointment
The undersigned has been appointed under subsection 22(3) of the Trademarks Regulations by the trademark agent that resides in Canada appointed on the following trademark applications and registrations as associate trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as associate agent is revoked under section 23 of the Trademarks Regulations and the appointed trademark agent will remain of record
58
Temporary Appointment
Suggested wording for a temporary appointment and subsequent revocation can also be found in the relevant Practice Notice on the CIPO website
59
Temporary Appointment
60
Appointment of Agent on Transfers
The Office has been receiving requests for transfers under section 48 of the Actin which it is unclear on behalf of whom the request is initiated (ie the transferee or the transferor)
61
Appointment of Agent on Transfers
In view of the requirements in the Regulations on representation and the appointment of trademark agents all requests for transfers under section 48 of the Act must clearly indicate whether the transferee is appointing the agent who submitted the request
62
Appointment of Agent on Transfers
In view of the evidentiary requirements to record or register a transfer on the request of a transferee all requests must indicate which party is requesting the transfer
63
Appointment of Agent on Transfers
Similarly because it is unclear on behalf of whom the request is initiated it is often unclear whether the transferee is appointing an agent to represent them in respect of that trademark application or registration
64
Appointment of Agent on Transfers
Without a new appointment of agent if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
Extensions of time
36
The Branch has been looking for ways to render the end-to-end examination process more efficient and timely
One of the ways to reduce pendency in examination is to amend the practice with respect to the granting extensions of time
Extensions of time
37
Automatic or unwarranted extensions of time slow down the registration process considerably
To put things in perspective in 2018 the Office granted more than 11000 requests for extension of time at the examination stage alone
Extensions of time
38
The practice notice on extensions of time was amended on January 17 to remove the first six-month extension following an examinerrsquos report that was available for practically any reason
Extensions of time
39
Going forward the Office will generally not grant an extension of time to file a response to an examinerrsquos report unless the applicant can demonstrate exceptional circumstances justifying why it is not yet possible to file a proper response
Extensions of time
40
In an effort to implement a smooth transition from the previous practice the practice of not granting an extension of time to reply to an examinerrsquos report unless exceptional circumstances exist will only apply to trademark applications for which an examinerrsquos report has been issued on or after the publication date of this amended practice notice
Extensions of time
41
As a result for applications for which an examinerrsquos report has issued prior to the publication date of January 17 the Office will generally grant the applicant one (1) extension of time of up to a maximum of six (6) months to file a response to an examiners report if the request is justified
Extensions of time
42
The following are examples of what could amount to an exceptional circumstance that would justify an extension of time
Extensions of time No change
43
1 Recent change in trademark agentThere has been a very recent change in the appointed trademark agent and the agent requires time to become familiar with the file
No change
Extensions of time
44
2 Circumstances beyond the control of the person concernedExamples include illness accident death bankruptcy or other serious and unforeseen circumstances
No change
Extensions of time
45
3 TransferThere is a request pending at the Office to record or register the transfer of an application or registered trademark and said transfer would overcome a confusion objection
No change
Extensions of time
46
4 OppositionA co-pending and confusing trademark is the subject of a pending opposition proceeding
Amended
Extensions of time
47
5 Section 45A registered trademark cited as confusing is subject to a pending section 45 proceeding
Amended
Extensions of time
48
6 Official markThe applicant is in the process of actively negotiating a consent from the holder of an official mark
Amended
Extensions of time
49
7 Division of a Protocol applicationThe applicant has filed a request for the division in respect of Canada of the international registration on which the original Protocol application is based and is waiting on the International Bureau for notification that a divisional international registration has been created
No change
Extensions of time
50
8 Respond to an objection which could lead to a refusal under paragraphs 37(1)(b) (c) or (d) of the ActThe applicant requires more time to consider the objection and file a proper response The applicant may request an extension of time for this reason only once in the prosecution of the application
New
Extensions of time
51
9 Compile evidence of distinctiveness under subsection 32(1) of the ActThe applicant is in the process of compiling the sufficient evidence required to show that the trademark was distinctive at the filing date of the application The applicant may request an extension of time for this reason only once in the prosecution of the application New
Fee for Extensions of time
52
The $125 fee to request an extension of time is only required where a person applies to extend the deadline or period of time that is fixed by the Act or prescribed by the Regulations
Fee for Extensions of time
53
Therefore the fee is not required to request an extension of time to respond to an examinerrsquos report as the period of time to respond is not fixed in either the Act or its Regulations
Fee for Extensions of time
54
The fee is required to request an extension of time where the applicant is considered to be in default of the prosecution of the application as the period of time to respond to a default isfixed in section 34 of the Regulations
55
Appointment of a Trademark Agent or an Associate Trademark Agent
The temporary appointment of an agent or associate agent for the purpose of grouping the goods or services of a trademark registration according to the Nice Classification may be done using the Group Goods or Services (Nice Classification) e-service on CIPOrsquos website by including the details of temporary appointment and subsequent revocation in the ldquoClosing detailsrdquo section
56
Temporary Appointment
The undersigned has been appointed under subsection 22(1) of the Trademarks Regulations by the applicant or registered owner as trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as trademark agent is revoked under section 23 of the Trademarks Regulations
57
Temporary Appointment
The undersigned has been appointed under subsection 22(3) of the Trademarks Regulations by the trademark agent that resides in Canada appointed on the following trademark applications and registrations as associate trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as associate agent is revoked under section 23 of the Trademarks Regulations and the appointed trademark agent will remain of record
58
Temporary Appointment
Suggested wording for a temporary appointment and subsequent revocation can also be found in the relevant Practice Notice on the CIPO website
59
Temporary Appointment
60
Appointment of Agent on Transfers
The Office has been receiving requests for transfers under section 48 of the Actin which it is unclear on behalf of whom the request is initiated (ie the transferee or the transferor)
61
Appointment of Agent on Transfers
In view of the requirements in the Regulations on representation and the appointment of trademark agents all requests for transfers under section 48 of the Act must clearly indicate whether the transferee is appointing the agent who submitted the request
62
Appointment of Agent on Transfers
In view of the evidentiary requirements to record or register a transfer on the request of a transferee all requests must indicate which party is requesting the transfer
63
Appointment of Agent on Transfers
Similarly because it is unclear on behalf of whom the request is initiated it is often unclear whether the transferee is appointing an agent to represent them in respect of that trademark application or registration
64
Appointment of Agent on Transfers
Without a new appointment of agent if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
Extensions of time
37
Automatic or unwarranted extensions of time slow down the registration process considerably
To put things in perspective in 2018 the Office granted more than 11000 requests for extension of time at the examination stage alone
Extensions of time
38
The practice notice on extensions of time was amended on January 17 to remove the first six-month extension following an examinerrsquos report that was available for practically any reason
Extensions of time
39
Going forward the Office will generally not grant an extension of time to file a response to an examinerrsquos report unless the applicant can demonstrate exceptional circumstances justifying why it is not yet possible to file a proper response
Extensions of time
40
In an effort to implement a smooth transition from the previous practice the practice of not granting an extension of time to reply to an examinerrsquos report unless exceptional circumstances exist will only apply to trademark applications for which an examinerrsquos report has been issued on or after the publication date of this amended practice notice
Extensions of time
41
As a result for applications for which an examinerrsquos report has issued prior to the publication date of January 17 the Office will generally grant the applicant one (1) extension of time of up to a maximum of six (6) months to file a response to an examiners report if the request is justified
Extensions of time
42
The following are examples of what could amount to an exceptional circumstance that would justify an extension of time
Extensions of time No change
43
1 Recent change in trademark agentThere has been a very recent change in the appointed trademark agent and the agent requires time to become familiar with the file
No change
Extensions of time
44
2 Circumstances beyond the control of the person concernedExamples include illness accident death bankruptcy or other serious and unforeseen circumstances
No change
Extensions of time
45
3 TransferThere is a request pending at the Office to record or register the transfer of an application or registered trademark and said transfer would overcome a confusion objection
No change
Extensions of time
46
4 OppositionA co-pending and confusing trademark is the subject of a pending opposition proceeding
Amended
Extensions of time
47
5 Section 45A registered trademark cited as confusing is subject to a pending section 45 proceeding
Amended
Extensions of time
48
6 Official markThe applicant is in the process of actively negotiating a consent from the holder of an official mark
Amended
Extensions of time
49
7 Division of a Protocol applicationThe applicant has filed a request for the division in respect of Canada of the international registration on which the original Protocol application is based and is waiting on the International Bureau for notification that a divisional international registration has been created
No change
Extensions of time
50
8 Respond to an objection which could lead to a refusal under paragraphs 37(1)(b) (c) or (d) of the ActThe applicant requires more time to consider the objection and file a proper response The applicant may request an extension of time for this reason only once in the prosecution of the application
New
Extensions of time
51
9 Compile evidence of distinctiveness under subsection 32(1) of the ActThe applicant is in the process of compiling the sufficient evidence required to show that the trademark was distinctive at the filing date of the application The applicant may request an extension of time for this reason only once in the prosecution of the application New
Fee for Extensions of time
52
The $125 fee to request an extension of time is only required where a person applies to extend the deadline or period of time that is fixed by the Act or prescribed by the Regulations
Fee for Extensions of time
53
Therefore the fee is not required to request an extension of time to respond to an examinerrsquos report as the period of time to respond is not fixed in either the Act or its Regulations
Fee for Extensions of time
54
The fee is required to request an extension of time where the applicant is considered to be in default of the prosecution of the application as the period of time to respond to a default isfixed in section 34 of the Regulations
55
Appointment of a Trademark Agent or an Associate Trademark Agent
The temporary appointment of an agent or associate agent for the purpose of grouping the goods or services of a trademark registration according to the Nice Classification may be done using the Group Goods or Services (Nice Classification) e-service on CIPOrsquos website by including the details of temporary appointment and subsequent revocation in the ldquoClosing detailsrdquo section
56
Temporary Appointment
The undersigned has been appointed under subsection 22(1) of the Trademarks Regulations by the applicant or registered owner as trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as trademark agent is revoked under section 23 of the Trademarks Regulations
57
Temporary Appointment
The undersigned has been appointed under subsection 22(3) of the Trademarks Regulations by the trademark agent that resides in Canada appointed on the following trademark applications and registrations as associate trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as associate agent is revoked under section 23 of the Trademarks Regulations and the appointed trademark agent will remain of record
58
Temporary Appointment
Suggested wording for a temporary appointment and subsequent revocation can also be found in the relevant Practice Notice on the CIPO website
59
Temporary Appointment
60
Appointment of Agent on Transfers
The Office has been receiving requests for transfers under section 48 of the Actin which it is unclear on behalf of whom the request is initiated (ie the transferee or the transferor)
61
Appointment of Agent on Transfers
In view of the requirements in the Regulations on representation and the appointment of trademark agents all requests for transfers under section 48 of the Act must clearly indicate whether the transferee is appointing the agent who submitted the request
62
Appointment of Agent on Transfers
In view of the evidentiary requirements to record or register a transfer on the request of a transferee all requests must indicate which party is requesting the transfer
63
Appointment of Agent on Transfers
Similarly because it is unclear on behalf of whom the request is initiated it is often unclear whether the transferee is appointing an agent to represent them in respect of that trademark application or registration
64
Appointment of Agent on Transfers
Without a new appointment of agent if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
Extensions of time
38
The practice notice on extensions of time was amended on January 17 to remove the first six-month extension following an examinerrsquos report that was available for practically any reason
Extensions of time
39
Going forward the Office will generally not grant an extension of time to file a response to an examinerrsquos report unless the applicant can demonstrate exceptional circumstances justifying why it is not yet possible to file a proper response
Extensions of time
40
In an effort to implement a smooth transition from the previous practice the practice of not granting an extension of time to reply to an examinerrsquos report unless exceptional circumstances exist will only apply to trademark applications for which an examinerrsquos report has been issued on or after the publication date of this amended practice notice
Extensions of time
41
As a result for applications for which an examinerrsquos report has issued prior to the publication date of January 17 the Office will generally grant the applicant one (1) extension of time of up to a maximum of six (6) months to file a response to an examiners report if the request is justified
Extensions of time
42
The following are examples of what could amount to an exceptional circumstance that would justify an extension of time
Extensions of time No change
43
1 Recent change in trademark agentThere has been a very recent change in the appointed trademark agent and the agent requires time to become familiar with the file
No change
Extensions of time
44
2 Circumstances beyond the control of the person concernedExamples include illness accident death bankruptcy or other serious and unforeseen circumstances
No change
Extensions of time
45
3 TransferThere is a request pending at the Office to record or register the transfer of an application or registered trademark and said transfer would overcome a confusion objection
No change
Extensions of time
46
4 OppositionA co-pending and confusing trademark is the subject of a pending opposition proceeding
Amended
Extensions of time
47
5 Section 45A registered trademark cited as confusing is subject to a pending section 45 proceeding
Amended
Extensions of time
48
6 Official markThe applicant is in the process of actively negotiating a consent from the holder of an official mark
Amended
Extensions of time
49
7 Division of a Protocol applicationThe applicant has filed a request for the division in respect of Canada of the international registration on which the original Protocol application is based and is waiting on the International Bureau for notification that a divisional international registration has been created
No change
Extensions of time
50
8 Respond to an objection which could lead to a refusal under paragraphs 37(1)(b) (c) or (d) of the ActThe applicant requires more time to consider the objection and file a proper response The applicant may request an extension of time for this reason only once in the prosecution of the application
New
Extensions of time
51
9 Compile evidence of distinctiveness under subsection 32(1) of the ActThe applicant is in the process of compiling the sufficient evidence required to show that the trademark was distinctive at the filing date of the application The applicant may request an extension of time for this reason only once in the prosecution of the application New
Fee for Extensions of time
52
The $125 fee to request an extension of time is only required where a person applies to extend the deadline or period of time that is fixed by the Act or prescribed by the Regulations
Fee for Extensions of time
53
Therefore the fee is not required to request an extension of time to respond to an examinerrsquos report as the period of time to respond is not fixed in either the Act or its Regulations
Fee for Extensions of time
54
The fee is required to request an extension of time where the applicant is considered to be in default of the prosecution of the application as the period of time to respond to a default isfixed in section 34 of the Regulations
55
Appointment of a Trademark Agent or an Associate Trademark Agent
The temporary appointment of an agent or associate agent for the purpose of grouping the goods or services of a trademark registration according to the Nice Classification may be done using the Group Goods or Services (Nice Classification) e-service on CIPOrsquos website by including the details of temporary appointment and subsequent revocation in the ldquoClosing detailsrdquo section
56
Temporary Appointment
The undersigned has been appointed under subsection 22(1) of the Trademarks Regulations by the applicant or registered owner as trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as trademark agent is revoked under section 23 of the Trademarks Regulations
57
Temporary Appointment
The undersigned has been appointed under subsection 22(3) of the Trademarks Regulations by the trademark agent that resides in Canada appointed on the following trademark applications and registrations as associate trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as associate agent is revoked under section 23 of the Trademarks Regulations and the appointed trademark agent will remain of record
58
Temporary Appointment
Suggested wording for a temporary appointment and subsequent revocation can also be found in the relevant Practice Notice on the CIPO website
59
Temporary Appointment
60
Appointment of Agent on Transfers
The Office has been receiving requests for transfers under section 48 of the Actin which it is unclear on behalf of whom the request is initiated (ie the transferee or the transferor)
61
Appointment of Agent on Transfers
In view of the requirements in the Regulations on representation and the appointment of trademark agents all requests for transfers under section 48 of the Act must clearly indicate whether the transferee is appointing the agent who submitted the request
62
Appointment of Agent on Transfers
In view of the evidentiary requirements to record or register a transfer on the request of a transferee all requests must indicate which party is requesting the transfer
63
Appointment of Agent on Transfers
Similarly because it is unclear on behalf of whom the request is initiated it is often unclear whether the transferee is appointing an agent to represent them in respect of that trademark application or registration
64
Appointment of Agent on Transfers
Without a new appointment of agent if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
Extensions of time
39
Going forward the Office will generally not grant an extension of time to file a response to an examinerrsquos report unless the applicant can demonstrate exceptional circumstances justifying why it is not yet possible to file a proper response
Extensions of time
40
In an effort to implement a smooth transition from the previous practice the practice of not granting an extension of time to reply to an examinerrsquos report unless exceptional circumstances exist will only apply to trademark applications for which an examinerrsquos report has been issued on or after the publication date of this amended practice notice
Extensions of time
41
As a result for applications for which an examinerrsquos report has issued prior to the publication date of January 17 the Office will generally grant the applicant one (1) extension of time of up to a maximum of six (6) months to file a response to an examiners report if the request is justified
Extensions of time
42
The following are examples of what could amount to an exceptional circumstance that would justify an extension of time
Extensions of time No change
43
1 Recent change in trademark agentThere has been a very recent change in the appointed trademark agent and the agent requires time to become familiar with the file
No change
Extensions of time
44
2 Circumstances beyond the control of the person concernedExamples include illness accident death bankruptcy or other serious and unforeseen circumstances
No change
Extensions of time
45
3 TransferThere is a request pending at the Office to record or register the transfer of an application or registered trademark and said transfer would overcome a confusion objection
No change
Extensions of time
46
4 OppositionA co-pending and confusing trademark is the subject of a pending opposition proceeding
Amended
Extensions of time
47
5 Section 45A registered trademark cited as confusing is subject to a pending section 45 proceeding
Amended
Extensions of time
48
6 Official markThe applicant is in the process of actively negotiating a consent from the holder of an official mark
Amended
Extensions of time
49
7 Division of a Protocol applicationThe applicant has filed a request for the division in respect of Canada of the international registration on which the original Protocol application is based and is waiting on the International Bureau for notification that a divisional international registration has been created
No change
Extensions of time
50
8 Respond to an objection which could lead to a refusal under paragraphs 37(1)(b) (c) or (d) of the ActThe applicant requires more time to consider the objection and file a proper response The applicant may request an extension of time for this reason only once in the prosecution of the application
New
Extensions of time
51
9 Compile evidence of distinctiveness under subsection 32(1) of the ActThe applicant is in the process of compiling the sufficient evidence required to show that the trademark was distinctive at the filing date of the application The applicant may request an extension of time for this reason only once in the prosecution of the application New
Fee for Extensions of time
52
The $125 fee to request an extension of time is only required where a person applies to extend the deadline or period of time that is fixed by the Act or prescribed by the Regulations
Fee for Extensions of time
53
Therefore the fee is not required to request an extension of time to respond to an examinerrsquos report as the period of time to respond is not fixed in either the Act or its Regulations
Fee for Extensions of time
54
The fee is required to request an extension of time where the applicant is considered to be in default of the prosecution of the application as the period of time to respond to a default isfixed in section 34 of the Regulations
55
Appointment of a Trademark Agent or an Associate Trademark Agent
The temporary appointment of an agent or associate agent for the purpose of grouping the goods or services of a trademark registration according to the Nice Classification may be done using the Group Goods or Services (Nice Classification) e-service on CIPOrsquos website by including the details of temporary appointment and subsequent revocation in the ldquoClosing detailsrdquo section
56
Temporary Appointment
The undersigned has been appointed under subsection 22(1) of the Trademarks Regulations by the applicant or registered owner as trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as trademark agent is revoked under section 23 of the Trademarks Regulations
57
Temporary Appointment
The undersigned has been appointed under subsection 22(3) of the Trademarks Regulations by the trademark agent that resides in Canada appointed on the following trademark applications and registrations as associate trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as associate agent is revoked under section 23 of the Trademarks Regulations and the appointed trademark agent will remain of record
58
Temporary Appointment
Suggested wording for a temporary appointment and subsequent revocation can also be found in the relevant Practice Notice on the CIPO website
59
Temporary Appointment
60
Appointment of Agent on Transfers
The Office has been receiving requests for transfers under section 48 of the Actin which it is unclear on behalf of whom the request is initiated (ie the transferee or the transferor)
61
Appointment of Agent on Transfers
In view of the requirements in the Regulations on representation and the appointment of trademark agents all requests for transfers under section 48 of the Act must clearly indicate whether the transferee is appointing the agent who submitted the request
62
Appointment of Agent on Transfers
In view of the evidentiary requirements to record or register a transfer on the request of a transferee all requests must indicate which party is requesting the transfer
63
Appointment of Agent on Transfers
Similarly because it is unclear on behalf of whom the request is initiated it is often unclear whether the transferee is appointing an agent to represent them in respect of that trademark application or registration
64
Appointment of Agent on Transfers
Without a new appointment of agent if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
Extensions of time
40
In an effort to implement a smooth transition from the previous practice the practice of not granting an extension of time to reply to an examinerrsquos report unless exceptional circumstances exist will only apply to trademark applications for which an examinerrsquos report has been issued on or after the publication date of this amended practice notice
Extensions of time
41
As a result for applications for which an examinerrsquos report has issued prior to the publication date of January 17 the Office will generally grant the applicant one (1) extension of time of up to a maximum of six (6) months to file a response to an examiners report if the request is justified
Extensions of time
42
The following are examples of what could amount to an exceptional circumstance that would justify an extension of time
Extensions of time No change
43
1 Recent change in trademark agentThere has been a very recent change in the appointed trademark agent and the agent requires time to become familiar with the file
No change
Extensions of time
44
2 Circumstances beyond the control of the person concernedExamples include illness accident death bankruptcy or other serious and unforeseen circumstances
No change
Extensions of time
45
3 TransferThere is a request pending at the Office to record or register the transfer of an application or registered trademark and said transfer would overcome a confusion objection
No change
Extensions of time
46
4 OppositionA co-pending and confusing trademark is the subject of a pending opposition proceeding
Amended
Extensions of time
47
5 Section 45A registered trademark cited as confusing is subject to a pending section 45 proceeding
Amended
Extensions of time
48
6 Official markThe applicant is in the process of actively negotiating a consent from the holder of an official mark
Amended
Extensions of time
49
7 Division of a Protocol applicationThe applicant has filed a request for the division in respect of Canada of the international registration on which the original Protocol application is based and is waiting on the International Bureau for notification that a divisional international registration has been created
No change
Extensions of time
50
8 Respond to an objection which could lead to a refusal under paragraphs 37(1)(b) (c) or (d) of the ActThe applicant requires more time to consider the objection and file a proper response The applicant may request an extension of time for this reason only once in the prosecution of the application
New
Extensions of time
51
9 Compile evidence of distinctiveness under subsection 32(1) of the ActThe applicant is in the process of compiling the sufficient evidence required to show that the trademark was distinctive at the filing date of the application The applicant may request an extension of time for this reason only once in the prosecution of the application New
Fee for Extensions of time
52
The $125 fee to request an extension of time is only required where a person applies to extend the deadline or period of time that is fixed by the Act or prescribed by the Regulations
Fee for Extensions of time
53
Therefore the fee is not required to request an extension of time to respond to an examinerrsquos report as the period of time to respond is not fixed in either the Act or its Regulations
Fee for Extensions of time
54
The fee is required to request an extension of time where the applicant is considered to be in default of the prosecution of the application as the period of time to respond to a default isfixed in section 34 of the Regulations
55
Appointment of a Trademark Agent or an Associate Trademark Agent
The temporary appointment of an agent or associate agent for the purpose of grouping the goods or services of a trademark registration according to the Nice Classification may be done using the Group Goods or Services (Nice Classification) e-service on CIPOrsquos website by including the details of temporary appointment and subsequent revocation in the ldquoClosing detailsrdquo section
56
Temporary Appointment
The undersigned has been appointed under subsection 22(1) of the Trademarks Regulations by the applicant or registered owner as trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as trademark agent is revoked under section 23 of the Trademarks Regulations
57
Temporary Appointment
The undersigned has been appointed under subsection 22(3) of the Trademarks Regulations by the trademark agent that resides in Canada appointed on the following trademark applications and registrations as associate trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as associate agent is revoked under section 23 of the Trademarks Regulations and the appointed trademark agent will remain of record
58
Temporary Appointment
Suggested wording for a temporary appointment and subsequent revocation can also be found in the relevant Practice Notice on the CIPO website
59
Temporary Appointment
60
Appointment of Agent on Transfers
The Office has been receiving requests for transfers under section 48 of the Actin which it is unclear on behalf of whom the request is initiated (ie the transferee or the transferor)
61
Appointment of Agent on Transfers
In view of the requirements in the Regulations on representation and the appointment of trademark agents all requests for transfers under section 48 of the Act must clearly indicate whether the transferee is appointing the agent who submitted the request
62
Appointment of Agent on Transfers
In view of the evidentiary requirements to record or register a transfer on the request of a transferee all requests must indicate which party is requesting the transfer
63
Appointment of Agent on Transfers
Similarly because it is unclear on behalf of whom the request is initiated it is often unclear whether the transferee is appointing an agent to represent them in respect of that trademark application or registration
64
Appointment of Agent on Transfers
Without a new appointment of agent if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
Extensions of time
41
As a result for applications for which an examinerrsquos report has issued prior to the publication date of January 17 the Office will generally grant the applicant one (1) extension of time of up to a maximum of six (6) months to file a response to an examiners report if the request is justified
Extensions of time
42
The following are examples of what could amount to an exceptional circumstance that would justify an extension of time
Extensions of time No change
43
1 Recent change in trademark agentThere has been a very recent change in the appointed trademark agent and the agent requires time to become familiar with the file
No change
Extensions of time
44
2 Circumstances beyond the control of the person concernedExamples include illness accident death bankruptcy or other serious and unforeseen circumstances
No change
Extensions of time
45
3 TransferThere is a request pending at the Office to record or register the transfer of an application or registered trademark and said transfer would overcome a confusion objection
No change
Extensions of time
46
4 OppositionA co-pending and confusing trademark is the subject of a pending opposition proceeding
Amended
Extensions of time
47
5 Section 45A registered trademark cited as confusing is subject to a pending section 45 proceeding
Amended
Extensions of time
48
6 Official markThe applicant is in the process of actively negotiating a consent from the holder of an official mark
Amended
Extensions of time
49
7 Division of a Protocol applicationThe applicant has filed a request for the division in respect of Canada of the international registration on which the original Protocol application is based and is waiting on the International Bureau for notification that a divisional international registration has been created
No change
Extensions of time
50
8 Respond to an objection which could lead to a refusal under paragraphs 37(1)(b) (c) or (d) of the ActThe applicant requires more time to consider the objection and file a proper response The applicant may request an extension of time for this reason only once in the prosecution of the application
New
Extensions of time
51
9 Compile evidence of distinctiveness under subsection 32(1) of the ActThe applicant is in the process of compiling the sufficient evidence required to show that the trademark was distinctive at the filing date of the application The applicant may request an extension of time for this reason only once in the prosecution of the application New
Fee for Extensions of time
52
The $125 fee to request an extension of time is only required where a person applies to extend the deadline or period of time that is fixed by the Act or prescribed by the Regulations
Fee for Extensions of time
53
Therefore the fee is not required to request an extension of time to respond to an examinerrsquos report as the period of time to respond is not fixed in either the Act or its Regulations
Fee for Extensions of time
54
The fee is required to request an extension of time where the applicant is considered to be in default of the prosecution of the application as the period of time to respond to a default isfixed in section 34 of the Regulations
55
Appointment of a Trademark Agent or an Associate Trademark Agent
The temporary appointment of an agent or associate agent for the purpose of grouping the goods or services of a trademark registration according to the Nice Classification may be done using the Group Goods or Services (Nice Classification) e-service on CIPOrsquos website by including the details of temporary appointment and subsequent revocation in the ldquoClosing detailsrdquo section
56
Temporary Appointment
The undersigned has been appointed under subsection 22(1) of the Trademarks Regulations by the applicant or registered owner as trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as trademark agent is revoked under section 23 of the Trademarks Regulations
57
Temporary Appointment
The undersigned has been appointed under subsection 22(3) of the Trademarks Regulations by the trademark agent that resides in Canada appointed on the following trademark applications and registrations as associate trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as associate agent is revoked under section 23 of the Trademarks Regulations and the appointed trademark agent will remain of record
58
Temporary Appointment
Suggested wording for a temporary appointment and subsequent revocation can also be found in the relevant Practice Notice on the CIPO website
59
Temporary Appointment
60
Appointment of Agent on Transfers
The Office has been receiving requests for transfers under section 48 of the Actin which it is unclear on behalf of whom the request is initiated (ie the transferee or the transferor)
61
Appointment of Agent on Transfers
In view of the requirements in the Regulations on representation and the appointment of trademark agents all requests for transfers under section 48 of the Act must clearly indicate whether the transferee is appointing the agent who submitted the request
62
Appointment of Agent on Transfers
In view of the evidentiary requirements to record or register a transfer on the request of a transferee all requests must indicate which party is requesting the transfer
63
Appointment of Agent on Transfers
Similarly because it is unclear on behalf of whom the request is initiated it is often unclear whether the transferee is appointing an agent to represent them in respect of that trademark application or registration
64
Appointment of Agent on Transfers
Without a new appointment of agent if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
Extensions of time
42
The following are examples of what could amount to an exceptional circumstance that would justify an extension of time
Extensions of time No change
43
1 Recent change in trademark agentThere has been a very recent change in the appointed trademark agent and the agent requires time to become familiar with the file
No change
Extensions of time
44
2 Circumstances beyond the control of the person concernedExamples include illness accident death bankruptcy or other serious and unforeseen circumstances
No change
Extensions of time
45
3 TransferThere is a request pending at the Office to record or register the transfer of an application or registered trademark and said transfer would overcome a confusion objection
No change
Extensions of time
46
4 OppositionA co-pending and confusing trademark is the subject of a pending opposition proceeding
Amended
Extensions of time
47
5 Section 45A registered trademark cited as confusing is subject to a pending section 45 proceeding
Amended
Extensions of time
48
6 Official markThe applicant is in the process of actively negotiating a consent from the holder of an official mark
Amended
Extensions of time
49
7 Division of a Protocol applicationThe applicant has filed a request for the division in respect of Canada of the international registration on which the original Protocol application is based and is waiting on the International Bureau for notification that a divisional international registration has been created
No change
Extensions of time
50
8 Respond to an objection which could lead to a refusal under paragraphs 37(1)(b) (c) or (d) of the ActThe applicant requires more time to consider the objection and file a proper response The applicant may request an extension of time for this reason only once in the prosecution of the application
New
Extensions of time
51
9 Compile evidence of distinctiveness under subsection 32(1) of the ActThe applicant is in the process of compiling the sufficient evidence required to show that the trademark was distinctive at the filing date of the application The applicant may request an extension of time for this reason only once in the prosecution of the application New
Fee for Extensions of time
52
The $125 fee to request an extension of time is only required where a person applies to extend the deadline or period of time that is fixed by the Act or prescribed by the Regulations
Fee for Extensions of time
53
Therefore the fee is not required to request an extension of time to respond to an examinerrsquos report as the period of time to respond is not fixed in either the Act or its Regulations
Fee for Extensions of time
54
The fee is required to request an extension of time where the applicant is considered to be in default of the prosecution of the application as the period of time to respond to a default isfixed in section 34 of the Regulations
55
Appointment of a Trademark Agent or an Associate Trademark Agent
The temporary appointment of an agent or associate agent for the purpose of grouping the goods or services of a trademark registration according to the Nice Classification may be done using the Group Goods or Services (Nice Classification) e-service on CIPOrsquos website by including the details of temporary appointment and subsequent revocation in the ldquoClosing detailsrdquo section
56
Temporary Appointment
The undersigned has been appointed under subsection 22(1) of the Trademarks Regulations by the applicant or registered owner as trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as trademark agent is revoked under section 23 of the Trademarks Regulations
57
Temporary Appointment
The undersigned has been appointed under subsection 22(3) of the Trademarks Regulations by the trademark agent that resides in Canada appointed on the following trademark applications and registrations as associate trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as associate agent is revoked under section 23 of the Trademarks Regulations and the appointed trademark agent will remain of record
58
Temporary Appointment
Suggested wording for a temporary appointment and subsequent revocation can also be found in the relevant Practice Notice on the CIPO website
59
Temporary Appointment
60
Appointment of Agent on Transfers
The Office has been receiving requests for transfers under section 48 of the Actin which it is unclear on behalf of whom the request is initiated (ie the transferee or the transferor)
61
Appointment of Agent on Transfers
In view of the requirements in the Regulations on representation and the appointment of trademark agents all requests for transfers under section 48 of the Act must clearly indicate whether the transferee is appointing the agent who submitted the request
62
Appointment of Agent on Transfers
In view of the evidentiary requirements to record or register a transfer on the request of a transferee all requests must indicate which party is requesting the transfer
63
Appointment of Agent on Transfers
Similarly because it is unclear on behalf of whom the request is initiated it is often unclear whether the transferee is appointing an agent to represent them in respect of that trademark application or registration
64
Appointment of Agent on Transfers
Without a new appointment of agent if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
Extensions of time No change
43
1 Recent change in trademark agentThere has been a very recent change in the appointed trademark agent and the agent requires time to become familiar with the file
No change
Extensions of time
44
2 Circumstances beyond the control of the person concernedExamples include illness accident death bankruptcy or other serious and unforeseen circumstances
No change
Extensions of time
45
3 TransferThere is a request pending at the Office to record or register the transfer of an application or registered trademark and said transfer would overcome a confusion objection
No change
Extensions of time
46
4 OppositionA co-pending and confusing trademark is the subject of a pending opposition proceeding
Amended
Extensions of time
47
5 Section 45A registered trademark cited as confusing is subject to a pending section 45 proceeding
Amended
Extensions of time
48
6 Official markThe applicant is in the process of actively negotiating a consent from the holder of an official mark
Amended
Extensions of time
49
7 Division of a Protocol applicationThe applicant has filed a request for the division in respect of Canada of the international registration on which the original Protocol application is based and is waiting on the International Bureau for notification that a divisional international registration has been created
No change
Extensions of time
50
8 Respond to an objection which could lead to a refusal under paragraphs 37(1)(b) (c) or (d) of the ActThe applicant requires more time to consider the objection and file a proper response The applicant may request an extension of time for this reason only once in the prosecution of the application
New
Extensions of time
51
9 Compile evidence of distinctiveness under subsection 32(1) of the ActThe applicant is in the process of compiling the sufficient evidence required to show that the trademark was distinctive at the filing date of the application The applicant may request an extension of time for this reason only once in the prosecution of the application New
Fee for Extensions of time
52
The $125 fee to request an extension of time is only required where a person applies to extend the deadline or period of time that is fixed by the Act or prescribed by the Regulations
Fee for Extensions of time
53
Therefore the fee is not required to request an extension of time to respond to an examinerrsquos report as the period of time to respond is not fixed in either the Act or its Regulations
Fee for Extensions of time
54
The fee is required to request an extension of time where the applicant is considered to be in default of the prosecution of the application as the period of time to respond to a default isfixed in section 34 of the Regulations
55
Appointment of a Trademark Agent or an Associate Trademark Agent
The temporary appointment of an agent or associate agent for the purpose of grouping the goods or services of a trademark registration according to the Nice Classification may be done using the Group Goods or Services (Nice Classification) e-service on CIPOrsquos website by including the details of temporary appointment and subsequent revocation in the ldquoClosing detailsrdquo section
56
Temporary Appointment
The undersigned has been appointed under subsection 22(1) of the Trademarks Regulations by the applicant or registered owner as trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as trademark agent is revoked under section 23 of the Trademarks Regulations
57
Temporary Appointment
The undersigned has been appointed under subsection 22(3) of the Trademarks Regulations by the trademark agent that resides in Canada appointed on the following trademark applications and registrations as associate trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as associate agent is revoked under section 23 of the Trademarks Regulations and the appointed trademark agent will remain of record
58
Temporary Appointment
Suggested wording for a temporary appointment and subsequent revocation can also be found in the relevant Practice Notice on the CIPO website
59
Temporary Appointment
60
Appointment of Agent on Transfers
The Office has been receiving requests for transfers under section 48 of the Actin which it is unclear on behalf of whom the request is initiated (ie the transferee or the transferor)
61
Appointment of Agent on Transfers
In view of the requirements in the Regulations on representation and the appointment of trademark agents all requests for transfers under section 48 of the Act must clearly indicate whether the transferee is appointing the agent who submitted the request
62
Appointment of Agent on Transfers
In view of the evidentiary requirements to record or register a transfer on the request of a transferee all requests must indicate which party is requesting the transfer
63
Appointment of Agent on Transfers
Similarly because it is unclear on behalf of whom the request is initiated it is often unclear whether the transferee is appointing an agent to represent them in respect of that trademark application or registration
64
Appointment of Agent on Transfers
Without a new appointment of agent if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
Extensions of time
44
2 Circumstances beyond the control of the person concernedExamples include illness accident death bankruptcy or other serious and unforeseen circumstances
No change
Extensions of time
45
3 TransferThere is a request pending at the Office to record or register the transfer of an application or registered trademark and said transfer would overcome a confusion objection
No change
Extensions of time
46
4 OppositionA co-pending and confusing trademark is the subject of a pending opposition proceeding
Amended
Extensions of time
47
5 Section 45A registered trademark cited as confusing is subject to a pending section 45 proceeding
Amended
Extensions of time
48
6 Official markThe applicant is in the process of actively negotiating a consent from the holder of an official mark
Amended
Extensions of time
49
7 Division of a Protocol applicationThe applicant has filed a request for the division in respect of Canada of the international registration on which the original Protocol application is based and is waiting on the International Bureau for notification that a divisional international registration has been created
No change
Extensions of time
50
8 Respond to an objection which could lead to a refusal under paragraphs 37(1)(b) (c) or (d) of the ActThe applicant requires more time to consider the objection and file a proper response The applicant may request an extension of time for this reason only once in the prosecution of the application
New
Extensions of time
51
9 Compile evidence of distinctiveness under subsection 32(1) of the ActThe applicant is in the process of compiling the sufficient evidence required to show that the trademark was distinctive at the filing date of the application The applicant may request an extension of time for this reason only once in the prosecution of the application New
Fee for Extensions of time
52
The $125 fee to request an extension of time is only required where a person applies to extend the deadline or period of time that is fixed by the Act or prescribed by the Regulations
Fee for Extensions of time
53
Therefore the fee is not required to request an extension of time to respond to an examinerrsquos report as the period of time to respond is not fixed in either the Act or its Regulations
Fee for Extensions of time
54
The fee is required to request an extension of time where the applicant is considered to be in default of the prosecution of the application as the period of time to respond to a default isfixed in section 34 of the Regulations
55
Appointment of a Trademark Agent or an Associate Trademark Agent
The temporary appointment of an agent or associate agent for the purpose of grouping the goods or services of a trademark registration according to the Nice Classification may be done using the Group Goods or Services (Nice Classification) e-service on CIPOrsquos website by including the details of temporary appointment and subsequent revocation in the ldquoClosing detailsrdquo section
56
Temporary Appointment
The undersigned has been appointed under subsection 22(1) of the Trademarks Regulations by the applicant or registered owner as trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as trademark agent is revoked under section 23 of the Trademarks Regulations
57
Temporary Appointment
The undersigned has been appointed under subsection 22(3) of the Trademarks Regulations by the trademark agent that resides in Canada appointed on the following trademark applications and registrations as associate trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as associate agent is revoked under section 23 of the Trademarks Regulations and the appointed trademark agent will remain of record
58
Temporary Appointment
Suggested wording for a temporary appointment and subsequent revocation can also be found in the relevant Practice Notice on the CIPO website
59
Temporary Appointment
60
Appointment of Agent on Transfers
The Office has been receiving requests for transfers under section 48 of the Actin which it is unclear on behalf of whom the request is initiated (ie the transferee or the transferor)
61
Appointment of Agent on Transfers
In view of the requirements in the Regulations on representation and the appointment of trademark agents all requests for transfers under section 48 of the Act must clearly indicate whether the transferee is appointing the agent who submitted the request
62
Appointment of Agent on Transfers
In view of the evidentiary requirements to record or register a transfer on the request of a transferee all requests must indicate which party is requesting the transfer
63
Appointment of Agent on Transfers
Similarly because it is unclear on behalf of whom the request is initiated it is often unclear whether the transferee is appointing an agent to represent them in respect of that trademark application or registration
64
Appointment of Agent on Transfers
Without a new appointment of agent if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
Extensions of time
45
3 TransferThere is a request pending at the Office to record or register the transfer of an application or registered trademark and said transfer would overcome a confusion objection
No change
Extensions of time
46
4 OppositionA co-pending and confusing trademark is the subject of a pending opposition proceeding
Amended
Extensions of time
47
5 Section 45A registered trademark cited as confusing is subject to a pending section 45 proceeding
Amended
Extensions of time
48
6 Official markThe applicant is in the process of actively negotiating a consent from the holder of an official mark
Amended
Extensions of time
49
7 Division of a Protocol applicationThe applicant has filed a request for the division in respect of Canada of the international registration on which the original Protocol application is based and is waiting on the International Bureau for notification that a divisional international registration has been created
No change
Extensions of time
50
8 Respond to an objection which could lead to a refusal under paragraphs 37(1)(b) (c) or (d) of the ActThe applicant requires more time to consider the objection and file a proper response The applicant may request an extension of time for this reason only once in the prosecution of the application
New
Extensions of time
51
9 Compile evidence of distinctiveness under subsection 32(1) of the ActThe applicant is in the process of compiling the sufficient evidence required to show that the trademark was distinctive at the filing date of the application The applicant may request an extension of time for this reason only once in the prosecution of the application New
Fee for Extensions of time
52
The $125 fee to request an extension of time is only required where a person applies to extend the deadline or period of time that is fixed by the Act or prescribed by the Regulations
Fee for Extensions of time
53
Therefore the fee is not required to request an extension of time to respond to an examinerrsquos report as the period of time to respond is not fixed in either the Act or its Regulations
Fee for Extensions of time
54
The fee is required to request an extension of time where the applicant is considered to be in default of the prosecution of the application as the period of time to respond to a default isfixed in section 34 of the Regulations
55
Appointment of a Trademark Agent or an Associate Trademark Agent
The temporary appointment of an agent or associate agent for the purpose of grouping the goods or services of a trademark registration according to the Nice Classification may be done using the Group Goods or Services (Nice Classification) e-service on CIPOrsquos website by including the details of temporary appointment and subsequent revocation in the ldquoClosing detailsrdquo section
56
Temporary Appointment
The undersigned has been appointed under subsection 22(1) of the Trademarks Regulations by the applicant or registered owner as trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as trademark agent is revoked under section 23 of the Trademarks Regulations
57
Temporary Appointment
The undersigned has been appointed under subsection 22(3) of the Trademarks Regulations by the trademark agent that resides in Canada appointed on the following trademark applications and registrations as associate trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as associate agent is revoked under section 23 of the Trademarks Regulations and the appointed trademark agent will remain of record
58
Temporary Appointment
Suggested wording for a temporary appointment and subsequent revocation can also be found in the relevant Practice Notice on the CIPO website
59
Temporary Appointment
60
Appointment of Agent on Transfers
The Office has been receiving requests for transfers under section 48 of the Actin which it is unclear on behalf of whom the request is initiated (ie the transferee or the transferor)
61
Appointment of Agent on Transfers
In view of the requirements in the Regulations on representation and the appointment of trademark agents all requests for transfers under section 48 of the Act must clearly indicate whether the transferee is appointing the agent who submitted the request
62
Appointment of Agent on Transfers
In view of the evidentiary requirements to record or register a transfer on the request of a transferee all requests must indicate which party is requesting the transfer
63
Appointment of Agent on Transfers
Similarly because it is unclear on behalf of whom the request is initiated it is often unclear whether the transferee is appointing an agent to represent them in respect of that trademark application or registration
64
Appointment of Agent on Transfers
Without a new appointment of agent if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
Extensions of time
46
4 OppositionA co-pending and confusing trademark is the subject of a pending opposition proceeding
Amended
Extensions of time
47
5 Section 45A registered trademark cited as confusing is subject to a pending section 45 proceeding
Amended
Extensions of time
48
6 Official markThe applicant is in the process of actively negotiating a consent from the holder of an official mark
Amended
Extensions of time
49
7 Division of a Protocol applicationThe applicant has filed a request for the division in respect of Canada of the international registration on which the original Protocol application is based and is waiting on the International Bureau for notification that a divisional international registration has been created
No change
Extensions of time
50
8 Respond to an objection which could lead to a refusal under paragraphs 37(1)(b) (c) or (d) of the ActThe applicant requires more time to consider the objection and file a proper response The applicant may request an extension of time for this reason only once in the prosecution of the application
New
Extensions of time
51
9 Compile evidence of distinctiveness under subsection 32(1) of the ActThe applicant is in the process of compiling the sufficient evidence required to show that the trademark was distinctive at the filing date of the application The applicant may request an extension of time for this reason only once in the prosecution of the application New
Fee for Extensions of time
52
The $125 fee to request an extension of time is only required where a person applies to extend the deadline or period of time that is fixed by the Act or prescribed by the Regulations
Fee for Extensions of time
53
Therefore the fee is not required to request an extension of time to respond to an examinerrsquos report as the period of time to respond is not fixed in either the Act or its Regulations
Fee for Extensions of time
54
The fee is required to request an extension of time where the applicant is considered to be in default of the prosecution of the application as the period of time to respond to a default isfixed in section 34 of the Regulations
55
Appointment of a Trademark Agent or an Associate Trademark Agent
The temporary appointment of an agent or associate agent for the purpose of grouping the goods or services of a trademark registration according to the Nice Classification may be done using the Group Goods or Services (Nice Classification) e-service on CIPOrsquos website by including the details of temporary appointment and subsequent revocation in the ldquoClosing detailsrdquo section
56
Temporary Appointment
The undersigned has been appointed under subsection 22(1) of the Trademarks Regulations by the applicant or registered owner as trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as trademark agent is revoked under section 23 of the Trademarks Regulations
57
Temporary Appointment
The undersigned has been appointed under subsection 22(3) of the Trademarks Regulations by the trademark agent that resides in Canada appointed on the following trademark applications and registrations as associate trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as associate agent is revoked under section 23 of the Trademarks Regulations and the appointed trademark agent will remain of record
58
Temporary Appointment
Suggested wording for a temporary appointment and subsequent revocation can also be found in the relevant Practice Notice on the CIPO website
59
Temporary Appointment
60
Appointment of Agent on Transfers
The Office has been receiving requests for transfers under section 48 of the Actin which it is unclear on behalf of whom the request is initiated (ie the transferee or the transferor)
61
Appointment of Agent on Transfers
In view of the requirements in the Regulations on representation and the appointment of trademark agents all requests for transfers under section 48 of the Act must clearly indicate whether the transferee is appointing the agent who submitted the request
62
Appointment of Agent on Transfers
In view of the evidentiary requirements to record or register a transfer on the request of a transferee all requests must indicate which party is requesting the transfer
63
Appointment of Agent on Transfers
Similarly because it is unclear on behalf of whom the request is initiated it is often unclear whether the transferee is appointing an agent to represent them in respect of that trademark application or registration
64
Appointment of Agent on Transfers
Without a new appointment of agent if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
Extensions of time
47
5 Section 45A registered trademark cited as confusing is subject to a pending section 45 proceeding
Amended
Extensions of time
48
6 Official markThe applicant is in the process of actively negotiating a consent from the holder of an official mark
Amended
Extensions of time
49
7 Division of a Protocol applicationThe applicant has filed a request for the division in respect of Canada of the international registration on which the original Protocol application is based and is waiting on the International Bureau for notification that a divisional international registration has been created
No change
Extensions of time
50
8 Respond to an objection which could lead to a refusal under paragraphs 37(1)(b) (c) or (d) of the ActThe applicant requires more time to consider the objection and file a proper response The applicant may request an extension of time for this reason only once in the prosecution of the application
New
Extensions of time
51
9 Compile evidence of distinctiveness under subsection 32(1) of the ActThe applicant is in the process of compiling the sufficient evidence required to show that the trademark was distinctive at the filing date of the application The applicant may request an extension of time for this reason only once in the prosecution of the application New
Fee for Extensions of time
52
The $125 fee to request an extension of time is only required where a person applies to extend the deadline or period of time that is fixed by the Act or prescribed by the Regulations
Fee for Extensions of time
53
Therefore the fee is not required to request an extension of time to respond to an examinerrsquos report as the period of time to respond is not fixed in either the Act or its Regulations
Fee for Extensions of time
54
The fee is required to request an extension of time where the applicant is considered to be in default of the prosecution of the application as the period of time to respond to a default isfixed in section 34 of the Regulations
55
Appointment of a Trademark Agent or an Associate Trademark Agent
The temporary appointment of an agent or associate agent for the purpose of grouping the goods or services of a trademark registration according to the Nice Classification may be done using the Group Goods or Services (Nice Classification) e-service on CIPOrsquos website by including the details of temporary appointment and subsequent revocation in the ldquoClosing detailsrdquo section
56
Temporary Appointment
The undersigned has been appointed under subsection 22(1) of the Trademarks Regulations by the applicant or registered owner as trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as trademark agent is revoked under section 23 of the Trademarks Regulations
57
Temporary Appointment
The undersigned has been appointed under subsection 22(3) of the Trademarks Regulations by the trademark agent that resides in Canada appointed on the following trademark applications and registrations as associate trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as associate agent is revoked under section 23 of the Trademarks Regulations and the appointed trademark agent will remain of record
58
Temporary Appointment
Suggested wording for a temporary appointment and subsequent revocation can also be found in the relevant Practice Notice on the CIPO website
59
Temporary Appointment
60
Appointment of Agent on Transfers
The Office has been receiving requests for transfers under section 48 of the Actin which it is unclear on behalf of whom the request is initiated (ie the transferee or the transferor)
61
Appointment of Agent on Transfers
In view of the requirements in the Regulations on representation and the appointment of trademark agents all requests for transfers under section 48 of the Act must clearly indicate whether the transferee is appointing the agent who submitted the request
62
Appointment of Agent on Transfers
In view of the evidentiary requirements to record or register a transfer on the request of a transferee all requests must indicate which party is requesting the transfer
63
Appointment of Agent on Transfers
Similarly because it is unclear on behalf of whom the request is initiated it is often unclear whether the transferee is appointing an agent to represent them in respect of that trademark application or registration
64
Appointment of Agent on Transfers
Without a new appointment of agent if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
Extensions of time
48
6 Official markThe applicant is in the process of actively negotiating a consent from the holder of an official mark
Amended
Extensions of time
49
7 Division of a Protocol applicationThe applicant has filed a request for the division in respect of Canada of the international registration on which the original Protocol application is based and is waiting on the International Bureau for notification that a divisional international registration has been created
No change
Extensions of time
50
8 Respond to an objection which could lead to a refusal under paragraphs 37(1)(b) (c) or (d) of the ActThe applicant requires more time to consider the objection and file a proper response The applicant may request an extension of time for this reason only once in the prosecution of the application
New
Extensions of time
51
9 Compile evidence of distinctiveness under subsection 32(1) of the ActThe applicant is in the process of compiling the sufficient evidence required to show that the trademark was distinctive at the filing date of the application The applicant may request an extension of time for this reason only once in the prosecution of the application New
Fee for Extensions of time
52
The $125 fee to request an extension of time is only required where a person applies to extend the deadline or period of time that is fixed by the Act or prescribed by the Regulations
Fee for Extensions of time
53
Therefore the fee is not required to request an extension of time to respond to an examinerrsquos report as the period of time to respond is not fixed in either the Act or its Regulations
Fee for Extensions of time
54
The fee is required to request an extension of time where the applicant is considered to be in default of the prosecution of the application as the period of time to respond to a default isfixed in section 34 of the Regulations
55
Appointment of a Trademark Agent or an Associate Trademark Agent
The temporary appointment of an agent or associate agent for the purpose of grouping the goods or services of a trademark registration according to the Nice Classification may be done using the Group Goods or Services (Nice Classification) e-service on CIPOrsquos website by including the details of temporary appointment and subsequent revocation in the ldquoClosing detailsrdquo section
56
Temporary Appointment
The undersigned has been appointed under subsection 22(1) of the Trademarks Regulations by the applicant or registered owner as trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as trademark agent is revoked under section 23 of the Trademarks Regulations
57
Temporary Appointment
The undersigned has been appointed under subsection 22(3) of the Trademarks Regulations by the trademark agent that resides in Canada appointed on the following trademark applications and registrations as associate trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as associate agent is revoked under section 23 of the Trademarks Regulations and the appointed trademark agent will remain of record
58
Temporary Appointment
Suggested wording for a temporary appointment and subsequent revocation can also be found in the relevant Practice Notice on the CIPO website
59
Temporary Appointment
60
Appointment of Agent on Transfers
The Office has been receiving requests for transfers under section 48 of the Actin which it is unclear on behalf of whom the request is initiated (ie the transferee or the transferor)
61
Appointment of Agent on Transfers
In view of the requirements in the Regulations on representation and the appointment of trademark agents all requests for transfers under section 48 of the Act must clearly indicate whether the transferee is appointing the agent who submitted the request
62
Appointment of Agent on Transfers
In view of the evidentiary requirements to record or register a transfer on the request of a transferee all requests must indicate which party is requesting the transfer
63
Appointment of Agent on Transfers
Similarly because it is unclear on behalf of whom the request is initiated it is often unclear whether the transferee is appointing an agent to represent them in respect of that trademark application or registration
64
Appointment of Agent on Transfers
Without a new appointment of agent if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
Extensions of time
49
7 Division of a Protocol applicationThe applicant has filed a request for the division in respect of Canada of the international registration on which the original Protocol application is based and is waiting on the International Bureau for notification that a divisional international registration has been created
No change
Extensions of time
50
8 Respond to an objection which could lead to a refusal under paragraphs 37(1)(b) (c) or (d) of the ActThe applicant requires more time to consider the objection and file a proper response The applicant may request an extension of time for this reason only once in the prosecution of the application
New
Extensions of time
51
9 Compile evidence of distinctiveness under subsection 32(1) of the ActThe applicant is in the process of compiling the sufficient evidence required to show that the trademark was distinctive at the filing date of the application The applicant may request an extension of time for this reason only once in the prosecution of the application New
Fee for Extensions of time
52
The $125 fee to request an extension of time is only required where a person applies to extend the deadline or period of time that is fixed by the Act or prescribed by the Regulations
Fee for Extensions of time
53
Therefore the fee is not required to request an extension of time to respond to an examinerrsquos report as the period of time to respond is not fixed in either the Act or its Regulations
Fee for Extensions of time
54
The fee is required to request an extension of time where the applicant is considered to be in default of the prosecution of the application as the period of time to respond to a default isfixed in section 34 of the Regulations
55
Appointment of a Trademark Agent or an Associate Trademark Agent
The temporary appointment of an agent or associate agent for the purpose of grouping the goods or services of a trademark registration according to the Nice Classification may be done using the Group Goods or Services (Nice Classification) e-service on CIPOrsquos website by including the details of temporary appointment and subsequent revocation in the ldquoClosing detailsrdquo section
56
Temporary Appointment
The undersigned has been appointed under subsection 22(1) of the Trademarks Regulations by the applicant or registered owner as trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as trademark agent is revoked under section 23 of the Trademarks Regulations
57
Temporary Appointment
The undersigned has been appointed under subsection 22(3) of the Trademarks Regulations by the trademark agent that resides in Canada appointed on the following trademark applications and registrations as associate trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as associate agent is revoked under section 23 of the Trademarks Regulations and the appointed trademark agent will remain of record
58
Temporary Appointment
Suggested wording for a temporary appointment and subsequent revocation can also be found in the relevant Practice Notice on the CIPO website
59
Temporary Appointment
60
Appointment of Agent on Transfers
The Office has been receiving requests for transfers under section 48 of the Actin which it is unclear on behalf of whom the request is initiated (ie the transferee or the transferor)
61
Appointment of Agent on Transfers
In view of the requirements in the Regulations on representation and the appointment of trademark agents all requests for transfers under section 48 of the Act must clearly indicate whether the transferee is appointing the agent who submitted the request
62
Appointment of Agent on Transfers
In view of the evidentiary requirements to record or register a transfer on the request of a transferee all requests must indicate which party is requesting the transfer
63
Appointment of Agent on Transfers
Similarly because it is unclear on behalf of whom the request is initiated it is often unclear whether the transferee is appointing an agent to represent them in respect of that trademark application or registration
64
Appointment of Agent on Transfers
Without a new appointment of agent if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
Extensions of time
50
8 Respond to an objection which could lead to a refusal under paragraphs 37(1)(b) (c) or (d) of the ActThe applicant requires more time to consider the objection and file a proper response The applicant may request an extension of time for this reason only once in the prosecution of the application
New
Extensions of time
51
9 Compile evidence of distinctiveness under subsection 32(1) of the ActThe applicant is in the process of compiling the sufficient evidence required to show that the trademark was distinctive at the filing date of the application The applicant may request an extension of time for this reason only once in the prosecution of the application New
Fee for Extensions of time
52
The $125 fee to request an extension of time is only required where a person applies to extend the deadline or period of time that is fixed by the Act or prescribed by the Regulations
Fee for Extensions of time
53
Therefore the fee is not required to request an extension of time to respond to an examinerrsquos report as the period of time to respond is not fixed in either the Act or its Regulations
Fee for Extensions of time
54
The fee is required to request an extension of time where the applicant is considered to be in default of the prosecution of the application as the period of time to respond to a default isfixed in section 34 of the Regulations
55
Appointment of a Trademark Agent or an Associate Trademark Agent
The temporary appointment of an agent or associate agent for the purpose of grouping the goods or services of a trademark registration according to the Nice Classification may be done using the Group Goods or Services (Nice Classification) e-service on CIPOrsquos website by including the details of temporary appointment and subsequent revocation in the ldquoClosing detailsrdquo section
56
Temporary Appointment
The undersigned has been appointed under subsection 22(1) of the Trademarks Regulations by the applicant or registered owner as trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as trademark agent is revoked under section 23 of the Trademarks Regulations
57
Temporary Appointment
The undersigned has been appointed under subsection 22(3) of the Trademarks Regulations by the trademark agent that resides in Canada appointed on the following trademark applications and registrations as associate trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as associate agent is revoked under section 23 of the Trademarks Regulations and the appointed trademark agent will remain of record
58
Temporary Appointment
Suggested wording for a temporary appointment and subsequent revocation can also be found in the relevant Practice Notice on the CIPO website
59
Temporary Appointment
60
Appointment of Agent on Transfers
The Office has been receiving requests for transfers under section 48 of the Actin which it is unclear on behalf of whom the request is initiated (ie the transferee or the transferor)
61
Appointment of Agent on Transfers
In view of the requirements in the Regulations on representation and the appointment of trademark agents all requests for transfers under section 48 of the Act must clearly indicate whether the transferee is appointing the agent who submitted the request
62
Appointment of Agent on Transfers
In view of the evidentiary requirements to record or register a transfer on the request of a transferee all requests must indicate which party is requesting the transfer
63
Appointment of Agent on Transfers
Similarly because it is unclear on behalf of whom the request is initiated it is often unclear whether the transferee is appointing an agent to represent them in respect of that trademark application or registration
64
Appointment of Agent on Transfers
Without a new appointment of agent if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
Extensions of time
51
9 Compile evidence of distinctiveness under subsection 32(1) of the ActThe applicant is in the process of compiling the sufficient evidence required to show that the trademark was distinctive at the filing date of the application The applicant may request an extension of time for this reason only once in the prosecution of the application New
Fee for Extensions of time
52
The $125 fee to request an extension of time is only required where a person applies to extend the deadline or period of time that is fixed by the Act or prescribed by the Regulations
Fee for Extensions of time
53
Therefore the fee is not required to request an extension of time to respond to an examinerrsquos report as the period of time to respond is not fixed in either the Act or its Regulations
Fee for Extensions of time
54
The fee is required to request an extension of time where the applicant is considered to be in default of the prosecution of the application as the period of time to respond to a default isfixed in section 34 of the Regulations
55
Appointment of a Trademark Agent or an Associate Trademark Agent
The temporary appointment of an agent or associate agent for the purpose of grouping the goods or services of a trademark registration according to the Nice Classification may be done using the Group Goods or Services (Nice Classification) e-service on CIPOrsquos website by including the details of temporary appointment and subsequent revocation in the ldquoClosing detailsrdquo section
56
Temporary Appointment
The undersigned has been appointed under subsection 22(1) of the Trademarks Regulations by the applicant or registered owner as trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as trademark agent is revoked under section 23 of the Trademarks Regulations
57
Temporary Appointment
The undersigned has been appointed under subsection 22(3) of the Trademarks Regulations by the trademark agent that resides in Canada appointed on the following trademark applications and registrations as associate trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as associate agent is revoked under section 23 of the Trademarks Regulations and the appointed trademark agent will remain of record
58
Temporary Appointment
Suggested wording for a temporary appointment and subsequent revocation can also be found in the relevant Practice Notice on the CIPO website
59
Temporary Appointment
60
Appointment of Agent on Transfers
The Office has been receiving requests for transfers under section 48 of the Actin which it is unclear on behalf of whom the request is initiated (ie the transferee or the transferor)
61
Appointment of Agent on Transfers
In view of the requirements in the Regulations on representation and the appointment of trademark agents all requests for transfers under section 48 of the Act must clearly indicate whether the transferee is appointing the agent who submitted the request
62
Appointment of Agent on Transfers
In view of the evidentiary requirements to record or register a transfer on the request of a transferee all requests must indicate which party is requesting the transfer
63
Appointment of Agent on Transfers
Similarly because it is unclear on behalf of whom the request is initiated it is often unclear whether the transferee is appointing an agent to represent them in respect of that trademark application or registration
64
Appointment of Agent on Transfers
Without a new appointment of agent if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
Fee for Extensions of time
52
The $125 fee to request an extension of time is only required where a person applies to extend the deadline or period of time that is fixed by the Act or prescribed by the Regulations
Fee for Extensions of time
53
Therefore the fee is not required to request an extension of time to respond to an examinerrsquos report as the period of time to respond is not fixed in either the Act or its Regulations
Fee for Extensions of time
54
The fee is required to request an extension of time where the applicant is considered to be in default of the prosecution of the application as the period of time to respond to a default isfixed in section 34 of the Regulations
55
Appointment of a Trademark Agent or an Associate Trademark Agent
The temporary appointment of an agent or associate agent for the purpose of grouping the goods or services of a trademark registration according to the Nice Classification may be done using the Group Goods or Services (Nice Classification) e-service on CIPOrsquos website by including the details of temporary appointment and subsequent revocation in the ldquoClosing detailsrdquo section
56
Temporary Appointment
The undersigned has been appointed under subsection 22(1) of the Trademarks Regulations by the applicant or registered owner as trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as trademark agent is revoked under section 23 of the Trademarks Regulations
57
Temporary Appointment
The undersigned has been appointed under subsection 22(3) of the Trademarks Regulations by the trademark agent that resides in Canada appointed on the following trademark applications and registrations as associate trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as associate agent is revoked under section 23 of the Trademarks Regulations and the appointed trademark agent will remain of record
58
Temporary Appointment
Suggested wording for a temporary appointment and subsequent revocation can also be found in the relevant Practice Notice on the CIPO website
59
Temporary Appointment
60
Appointment of Agent on Transfers
The Office has been receiving requests for transfers under section 48 of the Actin which it is unclear on behalf of whom the request is initiated (ie the transferee or the transferor)
61
Appointment of Agent on Transfers
In view of the requirements in the Regulations on representation and the appointment of trademark agents all requests for transfers under section 48 of the Act must clearly indicate whether the transferee is appointing the agent who submitted the request
62
Appointment of Agent on Transfers
In view of the evidentiary requirements to record or register a transfer on the request of a transferee all requests must indicate which party is requesting the transfer
63
Appointment of Agent on Transfers
Similarly because it is unclear on behalf of whom the request is initiated it is often unclear whether the transferee is appointing an agent to represent them in respect of that trademark application or registration
64
Appointment of Agent on Transfers
Without a new appointment of agent if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
Fee for Extensions of time
53
Therefore the fee is not required to request an extension of time to respond to an examinerrsquos report as the period of time to respond is not fixed in either the Act or its Regulations
Fee for Extensions of time
54
The fee is required to request an extension of time where the applicant is considered to be in default of the prosecution of the application as the period of time to respond to a default isfixed in section 34 of the Regulations
55
Appointment of a Trademark Agent or an Associate Trademark Agent
The temporary appointment of an agent or associate agent for the purpose of grouping the goods or services of a trademark registration according to the Nice Classification may be done using the Group Goods or Services (Nice Classification) e-service on CIPOrsquos website by including the details of temporary appointment and subsequent revocation in the ldquoClosing detailsrdquo section
56
Temporary Appointment
The undersigned has been appointed under subsection 22(1) of the Trademarks Regulations by the applicant or registered owner as trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as trademark agent is revoked under section 23 of the Trademarks Regulations
57
Temporary Appointment
The undersigned has been appointed under subsection 22(3) of the Trademarks Regulations by the trademark agent that resides in Canada appointed on the following trademark applications and registrations as associate trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as associate agent is revoked under section 23 of the Trademarks Regulations and the appointed trademark agent will remain of record
58
Temporary Appointment
Suggested wording for a temporary appointment and subsequent revocation can also be found in the relevant Practice Notice on the CIPO website
59
Temporary Appointment
60
Appointment of Agent on Transfers
The Office has been receiving requests for transfers under section 48 of the Actin which it is unclear on behalf of whom the request is initiated (ie the transferee or the transferor)
61
Appointment of Agent on Transfers
In view of the requirements in the Regulations on representation and the appointment of trademark agents all requests for transfers under section 48 of the Act must clearly indicate whether the transferee is appointing the agent who submitted the request
62
Appointment of Agent on Transfers
In view of the evidentiary requirements to record or register a transfer on the request of a transferee all requests must indicate which party is requesting the transfer
63
Appointment of Agent on Transfers
Similarly because it is unclear on behalf of whom the request is initiated it is often unclear whether the transferee is appointing an agent to represent them in respect of that trademark application or registration
64
Appointment of Agent on Transfers
Without a new appointment of agent if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
Fee for Extensions of time
54
The fee is required to request an extension of time where the applicant is considered to be in default of the prosecution of the application as the period of time to respond to a default isfixed in section 34 of the Regulations
55
Appointment of a Trademark Agent or an Associate Trademark Agent
The temporary appointment of an agent or associate agent for the purpose of grouping the goods or services of a trademark registration according to the Nice Classification may be done using the Group Goods or Services (Nice Classification) e-service on CIPOrsquos website by including the details of temporary appointment and subsequent revocation in the ldquoClosing detailsrdquo section
56
Temporary Appointment
The undersigned has been appointed under subsection 22(1) of the Trademarks Regulations by the applicant or registered owner as trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as trademark agent is revoked under section 23 of the Trademarks Regulations
57
Temporary Appointment
The undersigned has been appointed under subsection 22(3) of the Trademarks Regulations by the trademark agent that resides in Canada appointed on the following trademark applications and registrations as associate trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as associate agent is revoked under section 23 of the Trademarks Regulations and the appointed trademark agent will remain of record
58
Temporary Appointment
Suggested wording for a temporary appointment and subsequent revocation can also be found in the relevant Practice Notice on the CIPO website
59
Temporary Appointment
60
Appointment of Agent on Transfers
The Office has been receiving requests for transfers under section 48 of the Actin which it is unclear on behalf of whom the request is initiated (ie the transferee or the transferor)
61
Appointment of Agent on Transfers
In view of the requirements in the Regulations on representation and the appointment of trademark agents all requests for transfers under section 48 of the Act must clearly indicate whether the transferee is appointing the agent who submitted the request
62
Appointment of Agent on Transfers
In view of the evidentiary requirements to record or register a transfer on the request of a transferee all requests must indicate which party is requesting the transfer
63
Appointment of Agent on Transfers
Similarly because it is unclear on behalf of whom the request is initiated it is often unclear whether the transferee is appointing an agent to represent them in respect of that trademark application or registration
64
Appointment of Agent on Transfers
Without a new appointment of agent if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
55
Appointment of a Trademark Agent or an Associate Trademark Agent
The temporary appointment of an agent or associate agent for the purpose of grouping the goods or services of a trademark registration according to the Nice Classification may be done using the Group Goods or Services (Nice Classification) e-service on CIPOrsquos website by including the details of temporary appointment and subsequent revocation in the ldquoClosing detailsrdquo section
56
Temporary Appointment
The undersigned has been appointed under subsection 22(1) of the Trademarks Regulations by the applicant or registered owner as trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as trademark agent is revoked under section 23 of the Trademarks Regulations
57
Temporary Appointment
The undersigned has been appointed under subsection 22(3) of the Trademarks Regulations by the trademark agent that resides in Canada appointed on the following trademark applications and registrations as associate trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as associate agent is revoked under section 23 of the Trademarks Regulations and the appointed trademark agent will remain of record
58
Temporary Appointment
Suggested wording for a temporary appointment and subsequent revocation can also be found in the relevant Practice Notice on the CIPO website
59
Temporary Appointment
60
Appointment of Agent on Transfers
The Office has been receiving requests for transfers under section 48 of the Actin which it is unclear on behalf of whom the request is initiated (ie the transferee or the transferor)
61
Appointment of Agent on Transfers
In view of the requirements in the Regulations on representation and the appointment of trademark agents all requests for transfers under section 48 of the Act must clearly indicate whether the transferee is appointing the agent who submitted the request
62
Appointment of Agent on Transfers
In view of the evidentiary requirements to record or register a transfer on the request of a transferee all requests must indicate which party is requesting the transfer
63
Appointment of Agent on Transfers
Similarly because it is unclear on behalf of whom the request is initiated it is often unclear whether the transferee is appointing an agent to represent them in respect of that trademark application or registration
64
Appointment of Agent on Transfers
Without a new appointment of agent if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
The temporary appointment of an agent or associate agent for the purpose of grouping the goods or services of a trademark registration according to the Nice Classification may be done using the Group Goods or Services (Nice Classification) e-service on CIPOrsquos website by including the details of temporary appointment and subsequent revocation in the ldquoClosing detailsrdquo section
56
Temporary Appointment
The undersigned has been appointed under subsection 22(1) of the Trademarks Regulations by the applicant or registered owner as trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as trademark agent is revoked under section 23 of the Trademarks Regulations
57
Temporary Appointment
The undersigned has been appointed under subsection 22(3) of the Trademarks Regulations by the trademark agent that resides in Canada appointed on the following trademark applications and registrations as associate trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as associate agent is revoked under section 23 of the Trademarks Regulations and the appointed trademark agent will remain of record
58
Temporary Appointment
Suggested wording for a temporary appointment and subsequent revocation can also be found in the relevant Practice Notice on the CIPO website
59
Temporary Appointment
60
Appointment of Agent on Transfers
The Office has been receiving requests for transfers under section 48 of the Actin which it is unclear on behalf of whom the request is initiated (ie the transferee or the transferor)
61
Appointment of Agent on Transfers
In view of the requirements in the Regulations on representation and the appointment of trademark agents all requests for transfers under section 48 of the Act must clearly indicate whether the transferee is appointing the agent who submitted the request
62
Appointment of Agent on Transfers
In view of the evidentiary requirements to record or register a transfer on the request of a transferee all requests must indicate which party is requesting the transfer
63
Appointment of Agent on Transfers
Similarly because it is unclear on behalf of whom the request is initiated it is often unclear whether the transferee is appointing an agent to represent them in respect of that trademark application or registration
64
Appointment of Agent on Transfers
Without a new appointment of agent if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
The undersigned has been appointed under subsection 22(1) of the Trademarks Regulations by the applicant or registered owner as trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as trademark agent is revoked under section 23 of the Trademarks Regulations
57
Temporary Appointment
The undersigned has been appointed under subsection 22(3) of the Trademarks Regulations by the trademark agent that resides in Canada appointed on the following trademark applications and registrations as associate trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as associate agent is revoked under section 23 of the Trademarks Regulations and the appointed trademark agent will remain of record
58
Temporary Appointment
Suggested wording for a temporary appointment and subsequent revocation can also be found in the relevant Practice Notice on the CIPO website
59
Temporary Appointment
60
Appointment of Agent on Transfers
The Office has been receiving requests for transfers under section 48 of the Actin which it is unclear on behalf of whom the request is initiated (ie the transferee or the transferor)
61
Appointment of Agent on Transfers
In view of the requirements in the Regulations on representation and the appointment of trademark agents all requests for transfers under section 48 of the Act must clearly indicate whether the transferee is appointing the agent who submitted the request
62
Appointment of Agent on Transfers
In view of the evidentiary requirements to record or register a transfer on the request of a transferee all requests must indicate which party is requesting the transfer
63
Appointment of Agent on Transfers
Similarly because it is unclear on behalf of whom the request is initiated it is often unclear whether the transferee is appointing an agent to represent them in respect of that trademark application or registration
64
Appointment of Agent on Transfers
Without a new appointment of agent if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
The undersigned has been appointed under subsection 22(3) of the Trademarks Regulations by the trademark agent that resides in Canada appointed on the following trademark applications and registrations as associate trademark agent for the purpose of the following
[details of request]
Upon recording by the Office of this request our appointment as associate agent is revoked under section 23 of the Trademarks Regulations and the appointed trademark agent will remain of record
58
Temporary Appointment
Suggested wording for a temporary appointment and subsequent revocation can also be found in the relevant Practice Notice on the CIPO website
59
Temporary Appointment
60
Appointment of Agent on Transfers
The Office has been receiving requests for transfers under section 48 of the Actin which it is unclear on behalf of whom the request is initiated (ie the transferee or the transferor)
61
Appointment of Agent on Transfers
In view of the requirements in the Regulations on representation and the appointment of trademark agents all requests for transfers under section 48 of the Act must clearly indicate whether the transferee is appointing the agent who submitted the request
62
Appointment of Agent on Transfers
In view of the evidentiary requirements to record or register a transfer on the request of a transferee all requests must indicate which party is requesting the transfer
63
Appointment of Agent on Transfers
Similarly because it is unclear on behalf of whom the request is initiated it is often unclear whether the transferee is appointing an agent to represent them in respect of that trademark application or registration
64
Appointment of Agent on Transfers
Without a new appointment of agent if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
Suggested wording for a temporary appointment and subsequent revocation can also be found in the relevant Practice Notice on the CIPO website
59
Temporary Appointment
60
Appointment of Agent on Transfers
The Office has been receiving requests for transfers under section 48 of the Actin which it is unclear on behalf of whom the request is initiated (ie the transferee or the transferor)
61
Appointment of Agent on Transfers
In view of the requirements in the Regulations on representation and the appointment of trademark agents all requests for transfers under section 48 of the Act must clearly indicate whether the transferee is appointing the agent who submitted the request
62
Appointment of Agent on Transfers
In view of the evidentiary requirements to record or register a transfer on the request of a transferee all requests must indicate which party is requesting the transfer
63
Appointment of Agent on Transfers
Similarly because it is unclear on behalf of whom the request is initiated it is often unclear whether the transferee is appointing an agent to represent them in respect of that trademark application or registration
64
Appointment of Agent on Transfers
Without a new appointment of agent if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
60
Appointment of Agent on Transfers
The Office has been receiving requests for transfers under section 48 of the Actin which it is unclear on behalf of whom the request is initiated (ie the transferee or the transferor)
61
Appointment of Agent on Transfers
In view of the requirements in the Regulations on representation and the appointment of trademark agents all requests for transfers under section 48 of the Act must clearly indicate whether the transferee is appointing the agent who submitted the request
62
Appointment of Agent on Transfers
In view of the evidentiary requirements to record or register a transfer on the request of a transferee all requests must indicate which party is requesting the transfer
63
Appointment of Agent on Transfers
Similarly because it is unclear on behalf of whom the request is initiated it is often unclear whether the transferee is appointing an agent to represent them in respect of that trademark application or registration
64
Appointment of Agent on Transfers
Without a new appointment of agent if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
61
Appointment of Agent on Transfers
In view of the requirements in the Regulations on representation and the appointment of trademark agents all requests for transfers under section 48 of the Act must clearly indicate whether the transferee is appointing the agent who submitted the request
62
Appointment of Agent on Transfers
In view of the evidentiary requirements to record or register a transfer on the request of a transferee all requests must indicate which party is requesting the transfer
63
Appointment of Agent on Transfers
Similarly because it is unclear on behalf of whom the request is initiated it is often unclear whether the transferee is appointing an agent to represent them in respect of that trademark application or registration
64
Appointment of Agent on Transfers
Without a new appointment of agent if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
62
Appointment of Agent on Transfers
In view of the evidentiary requirements to record or register a transfer on the request of a transferee all requests must indicate which party is requesting the transfer
63
Appointment of Agent on Transfers
Similarly because it is unclear on behalf of whom the request is initiated it is often unclear whether the transferee is appointing an agent to represent them in respect of that trademark application or registration
64
Appointment of Agent on Transfers
Without a new appointment of agent if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
63
Appointment of Agent on Transfers
Similarly because it is unclear on behalf of whom the request is initiated it is often unclear whether the transferee is appointing an agent to represent them in respect of that trademark application or registration
64
Appointment of Agent on Transfers
Without a new appointment of agent if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
64
Appointment of Agent on Transfers
Without a new appointment of agent if the request is submitted by the current agent and it is unclear on behalf of whom the request is initiated the Office can only assume it is initiated by the current applicant or registered owner since the agent appears to only be authorized to represent that person
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
65
Appointment of Agent on Transfers
Without an appointment of agent to represent the new owner the Office must revoke the agent who was previously appointed by the transferor since that appointment does not automatically apply to the new owner
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
66
Filing a Divisional Application
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
As there is currently no dedicated e-service for filing a divisional application applicants have two options
67
Filing a Divisional Application
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
1 Amend the original application using the e-amend service on the CIPO website by limiting the goods or services and in the closing details of the application indicate that the applicant wishes to file a divisional application specifying which of the goods and services should appear in the divisional application or
68
Filing a Divisional Application
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
2 File by paper on the original application a request to file a divisional application specifying which of the goods and services should be limited on the original application and which should appear in the divisional application
69
Filing a Divisional Application
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
70
Inherent Distinctiveness
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
Section 2 of the Trademarks ActDistinctive in relation to a trademark describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them
Types of Distinctiveness
71
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
A trademark actually distinguishes by acquiring distinctiveness through use
A trademark that is adapted so to distinguish is one that does not depend upon use for its distinctiveness because its is inherently distinctive
Types of Distinctiveness
72
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
bull Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated
bull A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
What is inherent distinctiveness
73
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
bull An assessment as to whether a trademark is inherently distinctive requires consideration of the trademark in connection with the associated goods and services assuming no use (as defined in section 4 of the Act) has occurred
bull It must also take into account the first impression of the average Canadian consumer of those goods or services
The Assessment
74
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
As stated by the Federal Court in ITV Technologies Inc v WIC Television LtdldquoThe inherent distinctiveness of a trademark refers to its originality A trademark that is composed of a unique or invented name such that it can only refer to one thing will possess more inherent distinctiveness than a word that is commonly used in the traderdquo
The Assessment
75
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
In other words is it the sort of trademark that can distinguish the source of the goods or services without first educating the public that it is a trademark
The Assessment
76
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
The question an examiner must answer when deciding whether a trademark is inherently distinctive is whether other traders are likely in the ordinary course of their businesses to desire to use the same trademark in association with the same or similar goods or services
The Assessment
77
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
It does not matter that other traders are not currently using a sign in association with their goods or services but rather whether they are likely to want to use it
The Assessment
78
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
If research points to widespread use by others in the trade the trademark is likely to have no inherent distinctiveness as the public would not respond to the trademark as identifying only one source
The Assessment
79
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources
The Assessment
80
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
When raising an objection examiners must provide a clear explanation why the Registrarrsquos preliminary view is that the trademark is not inherently distinctive
It is not enough to merely point to paragraph 32(1)(b) of the Act
Raising Objection
81
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
Examiners must indicate whether the objection relates to all the associated goods or services or only to some
Raising Objection
82
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
If the objection is being raised due to use of the trademark by others in the marketplace the results of the examinerrsquos research should be provided to the applicant
These results should be limited to use which is likely to be seen by Canadian consumers
Raising Objection
83
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
All applications not advertised by June 17 2019 require reassessment by an Examiner for inherent distinctiveness
Applications not advertised
84
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
Examples
85
bull Geographic locationsbull Names of coloursbull English and Frenchbull Names and Surnamesbull Laudatorybull Internet TLDsbull Forms of business associationbull Generic designsbull 1 amp 2-letter -numberbull Generic informationbull Other examples
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
Trademarks which are primarily geographic locations are generally not inherently distinctive even if the place is not known for those goods or services
Geographic locations
86
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
LONDON
in association with ldquooperation of drugstores and department storesrdquo
Geographic locations
87
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
ELBOW
in association with ldquoretail sale of snowmobilesrdquo
Geographic locations
88
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
A trademark that is the word for a colour is considered to have no inherent distinctiveness in relation to goods that would ordinarily or typically be that colour
Names of colours
89
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
WHITE
in association with ldquopaperrdquo or toothpasteldquo
Names of colours
90
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
RED
in association with ldquonight club servicesrdquo
Names of colours
91
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness
English and French
92
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
FURNITURE STORE MAGASIN DE MEUBLES
in association with retail sale of furniture
English and French
93
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
Two or more surnames that are not individually inherently distinctive are generally considered inherently distinctive when they are combined The need for other traders to use the combination in relation to similar goods or services is relatively low
Multiple surnames
94
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
PHILPOT JOHNSON SPRATLEY
in association with ldquooperation of vehicle dealershiprdquo
Multiple surnames
95
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
The addition of common honorifics either pre- (eg MRS MR DR DAME SIR) or post-nominally (eg ESQ) to a surname or full name will generally not render a trademark inherently distinctive
Names and honorifics
96
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
MR BOB JOHNSON
in association with ldquotourist agenciesrdquo
Names and honorifics
97
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
Words or phrases that laud (praise) the worth importance or value of a good or service are generally not inherently distinctive nor would their addition to an otherwise unregistrable trademark render the trademark inherently distinctive
Laudatory
98
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
ULTIMATEEXPERTQUALITYWONDERFULWORLD FAMOUS
Laudatory
99
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
A trademark composed solely of a top-level domain (ldquoTLDrdquo) in association with the operation of a domain-name registry or registrar services is not inherently distinctive as consumers are predisposed to view TLDs as a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services
Internet TLDs and URLs
100
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
BIZ
in association with ldquodomain name registration servicesrdquo
Internet TLDs and URLs
101
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
The addition of a Uniform Resource Locator (URL) or TLD to an otherwise unregistrable trademark generally does not add to the inherent distinctiveness of the trademark
The application does not have to be in association with online services in order to be found not inherently distinctive
Internet TLDs and URLs
102
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
WWWPOSTERSFORSALECOM
in association with ldquoart postersrdquo and ldquosale of art postersrdquo
Internet TLDs and URLs
103
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
WWWPEPSICOM
in association with ldquosoft drinksrdquo
Internet TLDs and URLs
104
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
Words and abbreviations that describe the legal form of a business such as Limited Company Partnership LLC Ltd GmbH etc generally are not inherently distinctive and do not add to the distinctiveness of a trademark
Forms of business association
105
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
GREENHOUSE TOOLS LTD
in association with hand tools or ldquoretail sale of gardening equipmentrdquo
Forms of business association
106
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner
Generic designs
107
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
in association with ldquowinerdquo or ldquograpesrdquo
Generic designs
108
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
in association with ldquohealthcare servicesrdquo
Generic designs
109
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
Single letter or number trademarks will generally be considered not inherently distinctive due to the likelihood of other traders needing to use a simple unembellished single letter or number
One or two lettersnumbers
110
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
X
in association with ldquohotel servicesrdquo
One or two lettersnumbers
111
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
in association with ldquochewing gumrdquo
One or two lettersnumbers
112
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive
One or two lettersnumbers
113
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
LE
in association with motor vehicles
One or two lettersnumbers
114
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
39
in association with long-distance calling card services
One or two lettersnumbers
115
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
Trademarks that serve only to provide generic information about or on any goods or services are generally not inherently distinctive
Generic information
116
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
CONTENTS ARE HOT
in association with beverage containers and takeout restaurant services
Generic information
117
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
FRAGILE
in association with ldquoprinted labelsrdquo and boxes for packaging
Generic information
118
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
I hearts OTTAWA
in association with ldquot-shirtsrdquo and ldquoretail sale of novelty itemsrdquo
Other examples
119
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
An applicant may overcome an objection under subsection 32(1) bybull submitting arguments that the
trademark has some inherent distinctiveness
bull filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application or
Overcoming Objection
120
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
If an objection under paragraphs 12(1)(a) or (b) is overcome by way of argument by the applicant the objection under subsection 32(1) will not automatically be withdrawn as the trademark may not be inherently distinctive despite not being clearly descriptive or primarily merely a name or surname
Overcoming Objection
121
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
Evidence of acquired distinctiveness must show that the trademark was distinctive in Canada
If the trademark was not used prior to the filing date it is unlikely that the applicant would be able to show that the trademark had acquired distinctiveness
Acquired Distinctiveness
122
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
123
WIPO Irregularities
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
bull Types of WIPO Irregularitiesbull Rule 11 (fees)bull Rule 12 (classification of gs)bull Rule 13 (wording of gs)
bull Registered Email notification from WIPO
124
WIPO Irregularities
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
Rule 11 (fees) ndash sample wording
125
WIPO Irregularities
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
Rule 11 (fees) ndash sample wording
126
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
Rule 12 (classification of gs) ndash sample wording
127
WIPO Irregularities
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
Rule 12 (classification of gs) ndash sample wording
128
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
Rule 13 (wording of gs) ndash sample wording
129
WIPO Irregularities
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
Rule 13 (wording of gs) ndash sample wording
130
WIPO Irregularities
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
bull Deadlines to respondbull To CIPObull To WIPO
bull Consequences of not respondingbull Rule 11 ndash abandoned AIRbull Rule 12 ndash WIPO classification
recordedbull Rule 13 ndash WIPO includes note in list
of gs
131
WIPO Irregularities
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
132
Responding to WIPO Irregularities
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
Log in to your ISED account
133
Responding to WIPO Irregularities
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
Follow path to access Madrid eFiling
134
Responding to WIPO Irregularities
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
ldquoStatusrdquo changes for the AIR
135
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
ldquoWIPO Irregularitiesrdquo Tab
136
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
ldquoWIPO Irregularitiesrdquo TabAttach response
137
Responding to WIPO Irregularities
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
ldquoWIPO Irregularitiesrdquo TabEnter response in ldquoAnswerrdquo box
138
Responding to WIPO Irregularities
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
Validate (HTMLPDF on next screen)
139
Responding to WIPO Irregularities
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
Send (MeF sends response to CIPO)
140
Responding to WIPO Irregularities
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
CIPO Examiner
Reviews response from applicantbull If acceptable forwards it to WIPO
orbull If not acceptable communicates
with applicant (applicant will have to respond)
New email templates
141
Responding to WIPO Irregularities
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
142
A Few More Madrid Items
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
Madrid eFiling ndash Cannot import basic applicationregistration ldquoMark not foundrdquo
143
Madrid Best Practices
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
To request expedited recording of information on a Basic application or registration to be able to import it into the Madrid eFiling system
bull Send the Nice Classification information through e-amend (application) using the Group goods or services (registration) or by fax AND
bull Send notification of the request to madridcanadaca
144
Madrid Best Practices
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
For any other question regarding an AIR that is pending with CIPO send an email to
madridcanadaca
145
Madrid Best Practices
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
Status of AIR after certification by CIPO
146
Madrid Best Practices
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
147
Madrid Best Practices
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
Status of AIR after certification by CIPO
148
Madrid Best Practices
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
Once the AIR is registered and has an IR changes to the IR must be made directly with WIPO for example
bull Subsequent designationbull Change of ownershipbull Change of addressbull Limitation bull Cancellation
WIPOrsquos ldquoContact Madridrdquo e-service
149
Madrid Best Practices
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
When designating Canada applicants of Protocol applications cannot amend the goods or services directly with CIPO prior to the issuance of a Total Provisional Refusal (Examinerrsquos Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
150
Madrid Best Practices
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
When Canada is designated CIPO sends a courtesy letter to the WIPO representative informing them of CIPOrsquos correspondence rules
Sent with the acknowledgement notice and client proof sheet
Process to appoint a Canadian agent on a Protocol application is same as the national process
151
Madrid Best Practices
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
If a Canadian trademark agent is not appointed the following are sent directly to the applicant
bull courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
bull all future correspondence from CIPO
152
Madrid Best Practices
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
153
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
154
Correspondence
Canadian Trademark Agent appointed
Canadian Trademark Agent not appointed
Approval Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Default Notice
Sent to Canadian Trademark Agent
Sent to Applicant
Statement of Grant of Protection (including Canadian Registration Certificate)
Sent to WIPO and courtesy copy sent to Canadian Trademark Agent
Sent to WIPO and courtesy copy sent to Applicant
When filing an AIR ldquoFiling languagerdquo must be the same as the language of the goods or services in the basic applicationregistration
By default it is language of userrsquos profile
155
Madrid Best Practices
Pop-up message in MeF in the ldquoBasic application or registrationrdquo tab
156
Madrid Best Practices
If filing language was not changed in the ldquoBasic application or registrationrdquo tab error message in ldquoGoods and servicesrdquo tab
157
Madrid Best Practices
Can no longer modify filing language (greyed outdrop-down menu doesnrsquot open)
Must create a new AIR and select correct filing language
158
Madrid Best Practices
ldquoFiling languagerdquo is different from ldquocorrespondence languagerdquo with WIPOCIPOEUIPO that can be different from the language of goods or services
159
Madrid Best Practices
AIR priority date can be the basic application filing date if within 6 month period
Do not wait until the last day tobull File the AIR may lose priority datebull Respond to the WIPO Irregularity
Notification CIPO needs time to review and correct the response if necessary
160
Madrid Best Practices
161
Questions
162
Thank youFor more information visit
wwwcipogccatm
Follow CIPO on Twitter CIPO_Canada
Communicate with CIPO on LinkedIn CanadianIntellectualPropertyOffice
- Canadarsquos Trademark Regime A Review since CIF
- Presentation Overview
- Slide Number 3
- Slide Number 4
- The Recommended Steps to Renewal
- Basic Renewal Fee
- 441(1) Notice
- Slide Number 8
- Slide Number 9
- Slide Number 10
- Slide Number 11
- Slide Number 12
- Slide Number 13
- Slide Number 14
- Slide Number 15
- Slide Number 16
- Slide Number 17
- Slide Number 18
- Slide Number 19
- Slide Number 20
- Slide Number 21
- Slide Number 22
- Slide Number 23
- Slide Number 24
- Slide Number 25
- Additional Renewal Fees
- Slide Number 27
- Renewal Fees
- Slide Number 29
- Partial Renewal
- Partial Renewal - Online
- Partial Renewal ndash Paper
- Partial Renewal ndash Paper
- Partial Renewal
- Extensions of Time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time No change
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Fee for Extensions of time
- Fee for Extensions of time
- Fee for Extensions of time
- Appointment of a Trademark Agent or an Associate Trademark Agent
- Slide Number 56
- Slide Number 57
- Slide Number 58
- Slide Number 59
- Slide Number 60
- Slide Number 61
- Slide Number 62
- Slide Number 63
- Slide Number 64
- Slide Number 65
- Filing a Divisional Application
- Slide Number 67
- Slide Number 68
- Slide Number 69
- Inherent Distinctiveness
- Types of Distinctiveness
- Types of Distinctiveness
- What is inherent distinctiveness
- The Assessment
- The Assessment
- The Assessment
- The Assessment
- The Assessment
- The Assessment
- The Assessment
- Raising Objection
- Raising Objection
- Raising Objection
- Applications not advertised
- Examples
- Geographic locations
- Geographic locations
- Geographic locations
- Names of colours
- Names of colours
- Names of colours
- English and French
- English and French
- Multiple surnames
- Multiple surnames
- Names and honorifics
- Names and honorifics
- Laudatory
- Laudatory
- Internet TLDs and URLs
- Internet TLDs and URLs
- Internet TLDs and URLs
- Internet TLDs and URLs
- Internet TLDs and URLs
- Forms of business association
- Forms of business association
- Generic designs
- Generic designs
- Generic designs
- One or two lettersnumbers
- One or two lettersnumbers
- One or two lettersnumbers
- One or two lettersnumbers
- One or two lettersnumbers
- One or two lettersnumbers
- Generic information
- Generic information
- Generic information
- Other examples
- Overcoming Objection
- Overcoming Objection
- Acquired Distinctiveness
- WIPO Irregularities
- Slide Number 124
- Slide Number 125
- Slide Number 126
- Slide Number 127
- Slide Number 128
- Slide Number 129
- Slide Number 130
- Slide Number 131
- Responding to WIPO Irregularities
- Slide Number 133
- Slide Number 134
- Slide Number 135
- Slide Number 136
- Slide Number 137
- Slide Number 138
- Slide Number 139
- Slide Number 140
- Slide Number 141
- A Few More Madrid Items
- Slide Number 143
- Slide Number 144
- Slide Number 145
- Slide Number 146
- Slide Number 147
- Slide Number 148
- Slide Number 149
- Slide Number 150
- Slide Number 151
- Slide Number 152
- Slide Number 153
- Slide Number 154
- Slide Number 155
- Slide Number 156
- Slide Number 157
- Slide Number 158
- Slide Number 159
- Slide Number 160
- Questions
- Thank youFor more information visitwwwcipogccatm
- Slide Number 163
-
Pop-up message in MeF in the ldquoBasic application or registrationrdquo tab
156
Madrid Best Practices
If filing language was not changed in the ldquoBasic application or registrationrdquo tab error message in ldquoGoods and servicesrdquo tab
157
Madrid Best Practices
Can no longer modify filing language (greyed outdrop-down menu doesnrsquot open)
Must create a new AIR and select correct filing language
158
Madrid Best Practices
ldquoFiling languagerdquo is different from ldquocorrespondence languagerdquo with WIPOCIPOEUIPO that can be different from the language of goods or services
159
Madrid Best Practices
AIR priority date can be the basic application filing date if within 6 month period
Do not wait until the last day tobull File the AIR may lose priority datebull Respond to the WIPO Irregularity
Notification CIPO needs time to review and correct the response if necessary
160
Madrid Best Practices
161
Questions
162
Thank youFor more information visit
wwwcipogccatm
Follow CIPO on Twitter CIPO_Canada
Communicate with CIPO on LinkedIn CanadianIntellectualPropertyOffice
- Canadarsquos Trademark Regime A Review since CIF
- Presentation Overview
- Slide Number 3
- Slide Number 4
- The Recommended Steps to Renewal
- Basic Renewal Fee
- 441(1) Notice
- Slide Number 8
- Slide Number 9
- Slide Number 10
- Slide Number 11
- Slide Number 12
- Slide Number 13
- Slide Number 14
- Slide Number 15
- Slide Number 16
- Slide Number 17
- Slide Number 18
- Slide Number 19
- Slide Number 20
- Slide Number 21
- Slide Number 22
- Slide Number 23
- Slide Number 24
- Slide Number 25
- Additional Renewal Fees
- Slide Number 27
- Renewal Fees
- Slide Number 29
- Partial Renewal
- Partial Renewal - Online
- Partial Renewal ndash Paper
- Partial Renewal ndash Paper
- Partial Renewal
- Extensions of Time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time No change
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Fee for Extensions of time
- Fee for Extensions of time
- Fee for Extensions of time
- Appointment of a Trademark Agent or an Associate Trademark Agent
- Slide Number 56
- Slide Number 57
- Slide Number 58
- Slide Number 59
- Slide Number 60
- Slide Number 61
- Slide Number 62
- Slide Number 63
- Slide Number 64
- Slide Number 65
- Filing a Divisional Application
- Slide Number 67
- Slide Number 68
- Slide Number 69
- Inherent Distinctiveness
- Types of Distinctiveness
- Types of Distinctiveness
- What is inherent distinctiveness
- The Assessment
- The Assessment
- The Assessment
- The Assessment
- The Assessment
- The Assessment
- The Assessment
- Raising Objection
- Raising Objection
- Raising Objection
- Applications not advertised
- Examples
- Geographic locations
- Geographic locations
- Geographic locations
- Names of colours
- Names of colours
- Names of colours
- English and French
- English and French
- Multiple surnames
- Multiple surnames
- Names and honorifics
- Names and honorifics
- Laudatory
- Laudatory
- Internet TLDs and URLs
- Internet TLDs and URLs
- Internet TLDs and URLs
- Internet TLDs and URLs
- Internet TLDs and URLs
- Forms of business association
- Forms of business association
- Generic designs
- Generic designs
- Generic designs
- One or two lettersnumbers
- One or two lettersnumbers
- One or two lettersnumbers
- One or two lettersnumbers
- One or two lettersnumbers
- One or two lettersnumbers
- Generic information
- Generic information
- Generic information
- Other examples
- Overcoming Objection
- Overcoming Objection
- Acquired Distinctiveness
- WIPO Irregularities
- Slide Number 124
- Slide Number 125
- Slide Number 126
- Slide Number 127
- Slide Number 128
- Slide Number 129
- Slide Number 130
- Slide Number 131
- Responding to WIPO Irregularities
- Slide Number 133
- Slide Number 134
- Slide Number 135
- Slide Number 136
- Slide Number 137
- Slide Number 138
- Slide Number 139
- Slide Number 140
- Slide Number 141
- A Few More Madrid Items
- Slide Number 143
- Slide Number 144
- Slide Number 145
- Slide Number 146
- Slide Number 147
- Slide Number 148
- Slide Number 149
- Slide Number 150
- Slide Number 151
- Slide Number 152
- Slide Number 153
- Slide Number 154
- Slide Number 155
- Slide Number 156
- Slide Number 157
- Slide Number 158
- Slide Number 159
- Slide Number 160
- Questions
- Thank youFor more information visitwwwcipogccatm
- Slide Number 163
-
If filing language was not changed in the ldquoBasic application or registrationrdquo tab error message in ldquoGoods and servicesrdquo tab
157
Madrid Best Practices
Can no longer modify filing language (greyed outdrop-down menu doesnrsquot open)
Must create a new AIR and select correct filing language
158
Madrid Best Practices
ldquoFiling languagerdquo is different from ldquocorrespondence languagerdquo with WIPOCIPOEUIPO that can be different from the language of goods or services
159
Madrid Best Practices
AIR priority date can be the basic application filing date if within 6 month period
Do not wait until the last day tobull File the AIR may lose priority datebull Respond to the WIPO Irregularity
Notification CIPO needs time to review and correct the response if necessary
160
Madrid Best Practices
161
Questions
162
Thank youFor more information visit
wwwcipogccatm
Follow CIPO on Twitter CIPO_Canada
Communicate with CIPO on LinkedIn CanadianIntellectualPropertyOffice
- Canadarsquos Trademark Regime A Review since CIF
- Presentation Overview
- Slide Number 3
- Slide Number 4
- The Recommended Steps to Renewal
- Basic Renewal Fee
- 441(1) Notice
- Slide Number 8
- Slide Number 9
- Slide Number 10
- Slide Number 11
- Slide Number 12
- Slide Number 13
- Slide Number 14
- Slide Number 15
- Slide Number 16
- Slide Number 17
- Slide Number 18
- Slide Number 19
- Slide Number 20
- Slide Number 21
- Slide Number 22
- Slide Number 23
- Slide Number 24
- Slide Number 25
- Additional Renewal Fees
- Slide Number 27
- Renewal Fees
- Slide Number 29
- Partial Renewal
- Partial Renewal - Online
- Partial Renewal ndash Paper
- Partial Renewal ndash Paper
- Partial Renewal
- Extensions of Time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time No change
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Fee for Extensions of time
- Fee for Extensions of time
- Fee for Extensions of time
- Appointment of a Trademark Agent or an Associate Trademark Agent
- Slide Number 56
- Slide Number 57
- Slide Number 58
- Slide Number 59
- Slide Number 60
- Slide Number 61
- Slide Number 62
- Slide Number 63
- Slide Number 64
- Slide Number 65
- Filing a Divisional Application
- Slide Number 67
- Slide Number 68
- Slide Number 69
- Inherent Distinctiveness
- Types of Distinctiveness
- Types of Distinctiveness
- What is inherent distinctiveness
- The Assessment
- The Assessment
- The Assessment
- The Assessment
- The Assessment
- The Assessment
- The Assessment
- Raising Objection
- Raising Objection
- Raising Objection
- Applications not advertised
- Examples
- Geographic locations
- Geographic locations
- Geographic locations
- Names of colours
- Names of colours
- Names of colours
- English and French
- English and French
- Multiple surnames
- Multiple surnames
- Names and honorifics
- Names and honorifics
- Laudatory
- Laudatory
- Internet TLDs and URLs
- Internet TLDs and URLs
- Internet TLDs and URLs
- Internet TLDs and URLs
- Internet TLDs and URLs
- Forms of business association
- Forms of business association
- Generic designs
- Generic designs
- Generic designs
- One or two lettersnumbers
- One or two lettersnumbers
- One or two lettersnumbers
- One or two lettersnumbers
- One or two lettersnumbers
- One or two lettersnumbers
- Generic information
- Generic information
- Generic information
- Other examples
- Overcoming Objection
- Overcoming Objection
- Acquired Distinctiveness
- WIPO Irregularities
- Slide Number 124
- Slide Number 125
- Slide Number 126
- Slide Number 127
- Slide Number 128
- Slide Number 129
- Slide Number 130
- Slide Number 131
- Responding to WIPO Irregularities
- Slide Number 133
- Slide Number 134
- Slide Number 135
- Slide Number 136
- Slide Number 137
- Slide Number 138
- Slide Number 139
- Slide Number 140
- Slide Number 141
- A Few More Madrid Items
- Slide Number 143
- Slide Number 144
- Slide Number 145
- Slide Number 146
- Slide Number 147
- Slide Number 148
- Slide Number 149
- Slide Number 150
- Slide Number 151
- Slide Number 152
- Slide Number 153
- Slide Number 154
- Slide Number 155
- Slide Number 156
- Slide Number 157
- Slide Number 158
- Slide Number 159
- Slide Number 160
- Questions
- Thank youFor more information visitwwwcipogccatm
- Slide Number 163
-
Can no longer modify filing language (greyed outdrop-down menu doesnrsquot open)
Must create a new AIR and select correct filing language
158
Madrid Best Practices
ldquoFiling languagerdquo is different from ldquocorrespondence languagerdquo with WIPOCIPOEUIPO that can be different from the language of goods or services
159
Madrid Best Practices
AIR priority date can be the basic application filing date if within 6 month period
Do not wait until the last day tobull File the AIR may lose priority datebull Respond to the WIPO Irregularity
Notification CIPO needs time to review and correct the response if necessary
160
Madrid Best Practices
161
Questions
162
Thank youFor more information visit
wwwcipogccatm
Follow CIPO on Twitter CIPO_Canada
Communicate with CIPO on LinkedIn CanadianIntellectualPropertyOffice
- Canadarsquos Trademark Regime A Review since CIF
- Presentation Overview
- Slide Number 3
- Slide Number 4
- The Recommended Steps to Renewal
- Basic Renewal Fee
- 441(1) Notice
- Slide Number 8
- Slide Number 9
- Slide Number 10
- Slide Number 11
- Slide Number 12
- Slide Number 13
- Slide Number 14
- Slide Number 15
- Slide Number 16
- Slide Number 17
- Slide Number 18
- Slide Number 19
- Slide Number 20
- Slide Number 21
- Slide Number 22
- Slide Number 23
- Slide Number 24
- Slide Number 25
- Additional Renewal Fees
- Slide Number 27
- Renewal Fees
- Slide Number 29
- Partial Renewal
- Partial Renewal - Online
- Partial Renewal ndash Paper
- Partial Renewal ndash Paper
- Partial Renewal
- Extensions of Time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time No change
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Fee for Extensions of time
- Fee for Extensions of time
- Fee for Extensions of time
- Appointment of a Trademark Agent or an Associate Trademark Agent
- Slide Number 56
- Slide Number 57
- Slide Number 58
- Slide Number 59
- Slide Number 60
- Slide Number 61
- Slide Number 62
- Slide Number 63
- Slide Number 64
- Slide Number 65
- Filing a Divisional Application
- Slide Number 67
- Slide Number 68
- Slide Number 69
- Inherent Distinctiveness
- Types of Distinctiveness
- Types of Distinctiveness
- What is inherent distinctiveness
- The Assessment
- The Assessment
- The Assessment
- The Assessment
- The Assessment
- The Assessment
- The Assessment
- Raising Objection
- Raising Objection
- Raising Objection
- Applications not advertised
- Examples
- Geographic locations
- Geographic locations
- Geographic locations
- Names of colours
- Names of colours
- Names of colours
- English and French
- English and French
- Multiple surnames
- Multiple surnames
- Names and honorifics
- Names and honorifics
- Laudatory
- Laudatory
- Internet TLDs and URLs
- Internet TLDs and URLs
- Internet TLDs and URLs
- Internet TLDs and URLs
- Internet TLDs and URLs
- Forms of business association
- Forms of business association
- Generic designs
- Generic designs
- Generic designs
- One or two lettersnumbers
- One or two lettersnumbers
- One or two lettersnumbers
- One or two lettersnumbers
- One or two lettersnumbers
- One or two lettersnumbers
- Generic information
- Generic information
- Generic information
- Other examples
- Overcoming Objection
- Overcoming Objection
- Acquired Distinctiveness
- WIPO Irregularities
- Slide Number 124
- Slide Number 125
- Slide Number 126
- Slide Number 127
- Slide Number 128
- Slide Number 129
- Slide Number 130
- Slide Number 131
- Responding to WIPO Irregularities
- Slide Number 133
- Slide Number 134
- Slide Number 135
- Slide Number 136
- Slide Number 137
- Slide Number 138
- Slide Number 139
- Slide Number 140
- Slide Number 141
- A Few More Madrid Items
- Slide Number 143
- Slide Number 144
- Slide Number 145
- Slide Number 146
- Slide Number 147
- Slide Number 148
- Slide Number 149
- Slide Number 150
- Slide Number 151
- Slide Number 152
- Slide Number 153
- Slide Number 154
- Slide Number 155
- Slide Number 156
- Slide Number 157
- Slide Number 158
- Slide Number 159
- Slide Number 160
- Questions
- Thank youFor more information visitwwwcipogccatm
- Slide Number 163
-
ldquoFiling languagerdquo is different from ldquocorrespondence languagerdquo with WIPOCIPOEUIPO that can be different from the language of goods or services
159
Madrid Best Practices
AIR priority date can be the basic application filing date if within 6 month period
Do not wait until the last day tobull File the AIR may lose priority datebull Respond to the WIPO Irregularity
Notification CIPO needs time to review and correct the response if necessary
160
Madrid Best Practices
161
Questions
162
Thank youFor more information visit
wwwcipogccatm
Follow CIPO on Twitter CIPO_Canada
Communicate with CIPO on LinkedIn CanadianIntellectualPropertyOffice
- Canadarsquos Trademark Regime A Review since CIF
- Presentation Overview
- Slide Number 3
- Slide Number 4
- The Recommended Steps to Renewal
- Basic Renewal Fee
- 441(1) Notice
- Slide Number 8
- Slide Number 9
- Slide Number 10
- Slide Number 11
- Slide Number 12
- Slide Number 13
- Slide Number 14
- Slide Number 15
- Slide Number 16
- Slide Number 17
- Slide Number 18
- Slide Number 19
- Slide Number 20
- Slide Number 21
- Slide Number 22
- Slide Number 23
- Slide Number 24
- Slide Number 25
- Additional Renewal Fees
- Slide Number 27
- Renewal Fees
- Slide Number 29
- Partial Renewal
- Partial Renewal - Online
- Partial Renewal ndash Paper
- Partial Renewal ndash Paper
- Partial Renewal
- Extensions of Time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time No change
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Fee for Extensions of time
- Fee for Extensions of time
- Fee for Extensions of time
- Appointment of a Trademark Agent or an Associate Trademark Agent
- Slide Number 56
- Slide Number 57
- Slide Number 58
- Slide Number 59
- Slide Number 60
- Slide Number 61
- Slide Number 62
- Slide Number 63
- Slide Number 64
- Slide Number 65
- Filing a Divisional Application
- Slide Number 67
- Slide Number 68
- Slide Number 69
- Inherent Distinctiveness
- Types of Distinctiveness
- Types of Distinctiveness
- What is inherent distinctiveness
- The Assessment
- The Assessment
- The Assessment
- The Assessment
- The Assessment
- The Assessment
- The Assessment
- Raising Objection
- Raising Objection
- Raising Objection
- Applications not advertised
- Examples
- Geographic locations
- Geographic locations
- Geographic locations
- Names of colours
- Names of colours
- Names of colours
- English and French
- English and French
- Multiple surnames
- Multiple surnames
- Names and honorifics
- Names and honorifics
- Laudatory
- Laudatory
- Internet TLDs and URLs
- Internet TLDs and URLs
- Internet TLDs and URLs
- Internet TLDs and URLs
- Internet TLDs and URLs
- Forms of business association
- Forms of business association
- Generic designs
- Generic designs
- Generic designs
- One or two lettersnumbers
- One or two lettersnumbers
- One or two lettersnumbers
- One or two lettersnumbers
- One or two lettersnumbers
- One or two lettersnumbers
- Generic information
- Generic information
- Generic information
- Other examples
- Overcoming Objection
- Overcoming Objection
- Acquired Distinctiveness
- WIPO Irregularities
- Slide Number 124
- Slide Number 125
- Slide Number 126
- Slide Number 127
- Slide Number 128
- Slide Number 129
- Slide Number 130
- Slide Number 131
- Responding to WIPO Irregularities
- Slide Number 133
- Slide Number 134
- Slide Number 135
- Slide Number 136
- Slide Number 137
- Slide Number 138
- Slide Number 139
- Slide Number 140
- Slide Number 141
- A Few More Madrid Items
- Slide Number 143
- Slide Number 144
- Slide Number 145
- Slide Number 146
- Slide Number 147
- Slide Number 148
- Slide Number 149
- Slide Number 150
- Slide Number 151
- Slide Number 152
- Slide Number 153
- Slide Number 154
- Slide Number 155
- Slide Number 156
- Slide Number 157
- Slide Number 158
- Slide Number 159
- Slide Number 160
- Questions
- Thank youFor more information visitwwwcipogccatm
- Slide Number 163
-
AIR priority date can be the basic application filing date if within 6 month period
Do not wait until the last day tobull File the AIR may lose priority datebull Respond to the WIPO Irregularity
Notification CIPO needs time to review and correct the response if necessary
160
Madrid Best Practices
161
Questions
162
Thank youFor more information visit
wwwcipogccatm
Follow CIPO on Twitter CIPO_Canada
Communicate with CIPO on LinkedIn CanadianIntellectualPropertyOffice
- Canadarsquos Trademark Regime A Review since CIF
- Presentation Overview
- Slide Number 3
- Slide Number 4
- The Recommended Steps to Renewal
- Basic Renewal Fee
- 441(1) Notice
- Slide Number 8
- Slide Number 9
- Slide Number 10
- Slide Number 11
- Slide Number 12
- Slide Number 13
- Slide Number 14
- Slide Number 15
- Slide Number 16
- Slide Number 17
- Slide Number 18
- Slide Number 19
- Slide Number 20
- Slide Number 21
- Slide Number 22
- Slide Number 23
- Slide Number 24
- Slide Number 25
- Additional Renewal Fees
- Slide Number 27
- Renewal Fees
- Slide Number 29
- Partial Renewal
- Partial Renewal - Online
- Partial Renewal ndash Paper
- Partial Renewal ndash Paper
- Partial Renewal
- Extensions of Time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time No change
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Fee for Extensions of time
- Fee for Extensions of time
- Fee for Extensions of time
- Appointment of a Trademark Agent or an Associate Trademark Agent
- Slide Number 56
- Slide Number 57
- Slide Number 58
- Slide Number 59
- Slide Number 60
- Slide Number 61
- Slide Number 62
- Slide Number 63
- Slide Number 64
- Slide Number 65
- Filing a Divisional Application
- Slide Number 67
- Slide Number 68
- Slide Number 69
- Inherent Distinctiveness
- Types of Distinctiveness
- Types of Distinctiveness
- What is inherent distinctiveness
- The Assessment
- The Assessment
- The Assessment
- The Assessment
- The Assessment
- The Assessment
- The Assessment
- Raising Objection
- Raising Objection
- Raising Objection
- Applications not advertised
- Examples
- Geographic locations
- Geographic locations
- Geographic locations
- Names of colours
- Names of colours
- Names of colours
- English and French
- English and French
- Multiple surnames
- Multiple surnames
- Names and honorifics
- Names and honorifics
- Laudatory
- Laudatory
- Internet TLDs and URLs
- Internet TLDs and URLs
- Internet TLDs and URLs
- Internet TLDs and URLs
- Internet TLDs and URLs
- Forms of business association
- Forms of business association
- Generic designs
- Generic designs
- Generic designs
- One or two lettersnumbers
- One or two lettersnumbers
- One or two lettersnumbers
- One or two lettersnumbers
- One or two lettersnumbers
- One or two lettersnumbers
- Generic information
- Generic information
- Generic information
- Other examples
- Overcoming Objection
- Overcoming Objection
- Acquired Distinctiveness
- WIPO Irregularities
- Slide Number 124
- Slide Number 125
- Slide Number 126
- Slide Number 127
- Slide Number 128
- Slide Number 129
- Slide Number 130
- Slide Number 131
- Responding to WIPO Irregularities
- Slide Number 133
- Slide Number 134
- Slide Number 135
- Slide Number 136
- Slide Number 137
- Slide Number 138
- Slide Number 139
- Slide Number 140
- Slide Number 141
- A Few More Madrid Items
- Slide Number 143
- Slide Number 144
- Slide Number 145
- Slide Number 146
- Slide Number 147
- Slide Number 148
- Slide Number 149
- Slide Number 150
- Slide Number 151
- Slide Number 152
- Slide Number 153
- Slide Number 154
- Slide Number 155
- Slide Number 156
- Slide Number 157
- Slide Number 158
- Slide Number 159
- Slide Number 160
- Questions
- Thank youFor more information visitwwwcipogccatm
- Slide Number 163
-
161
Questions
162
Thank youFor more information visit
wwwcipogccatm
Follow CIPO on Twitter CIPO_Canada
Communicate with CIPO on LinkedIn CanadianIntellectualPropertyOffice
- Canadarsquos Trademark Regime A Review since CIF
- Presentation Overview
- Slide Number 3
- Slide Number 4
- The Recommended Steps to Renewal
- Basic Renewal Fee
- 441(1) Notice
- Slide Number 8
- Slide Number 9
- Slide Number 10
- Slide Number 11
- Slide Number 12
- Slide Number 13
- Slide Number 14
- Slide Number 15
- Slide Number 16
- Slide Number 17
- Slide Number 18
- Slide Number 19
- Slide Number 20
- Slide Number 21
- Slide Number 22
- Slide Number 23
- Slide Number 24
- Slide Number 25
- Additional Renewal Fees
- Slide Number 27
- Renewal Fees
- Slide Number 29
- Partial Renewal
- Partial Renewal - Online
- Partial Renewal ndash Paper
- Partial Renewal ndash Paper
- Partial Renewal
- Extensions of Time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time No change
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Fee for Extensions of time
- Fee for Extensions of time
- Fee for Extensions of time
- Appointment of a Trademark Agent or an Associate Trademark Agent
- Slide Number 56
- Slide Number 57
- Slide Number 58
- Slide Number 59
- Slide Number 60
- Slide Number 61
- Slide Number 62
- Slide Number 63
- Slide Number 64
- Slide Number 65
- Filing a Divisional Application
- Slide Number 67
- Slide Number 68
- Slide Number 69
- Inherent Distinctiveness
- Types of Distinctiveness
- Types of Distinctiveness
- What is inherent distinctiveness
- The Assessment
- The Assessment
- The Assessment
- The Assessment
- The Assessment
- The Assessment
- The Assessment
- Raising Objection
- Raising Objection
- Raising Objection
- Applications not advertised
- Examples
- Geographic locations
- Geographic locations
- Geographic locations
- Names of colours
- Names of colours
- Names of colours
- English and French
- English and French
- Multiple surnames
- Multiple surnames
- Names and honorifics
- Names and honorifics
- Laudatory
- Laudatory
- Internet TLDs and URLs
- Internet TLDs and URLs
- Internet TLDs and URLs
- Internet TLDs and URLs
- Internet TLDs and URLs
- Forms of business association
- Forms of business association
- Generic designs
- Generic designs
- Generic designs
- One or two lettersnumbers
- One or two lettersnumbers
- One or two lettersnumbers
- One or two lettersnumbers
- One or two lettersnumbers
- One or two lettersnumbers
- Generic information
- Generic information
- Generic information
- Other examples
- Overcoming Objection
- Overcoming Objection
- Acquired Distinctiveness
- WIPO Irregularities
- Slide Number 124
- Slide Number 125
- Slide Number 126
- Slide Number 127
- Slide Number 128
- Slide Number 129
- Slide Number 130
- Slide Number 131
- Responding to WIPO Irregularities
- Slide Number 133
- Slide Number 134
- Slide Number 135
- Slide Number 136
- Slide Number 137
- Slide Number 138
- Slide Number 139
- Slide Number 140
- Slide Number 141
- A Few More Madrid Items
- Slide Number 143
- Slide Number 144
- Slide Number 145
- Slide Number 146
- Slide Number 147
- Slide Number 148
- Slide Number 149
- Slide Number 150
- Slide Number 151
- Slide Number 152
- Slide Number 153
- Slide Number 154
- Slide Number 155
- Slide Number 156
- Slide Number 157
- Slide Number 158
- Slide Number 159
- Slide Number 160
- Questions
- Thank youFor more information visitwwwcipogccatm
- Slide Number 163
-
162
Thank youFor more information visit
wwwcipogccatm
Follow CIPO on Twitter CIPO_Canada
Communicate with CIPO on LinkedIn CanadianIntellectualPropertyOffice
- Canadarsquos Trademark Regime A Review since CIF
- Presentation Overview
- Slide Number 3
- Slide Number 4
- The Recommended Steps to Renewal
- Basic Renewal Fee
- 441(1) Notice
- Slide Number 8
- Slide Number 9
- Slide Number 10
- Slide Number 11
- Slide Number 12
- Slide Number 13
- Slide Number 14
- Slide Number 15
- Slide Number 16
- Slide Number 17
- Slide Number 18
- Slide Number 19
- Slide Number 20
- Slide Number 21
- Slide Number 22
- Slide Number 23
- Slide Number 24
- Slide Number 25
- Additional Renewal Fees
- Slide Number 27
- Renewal Fees
- Slide Number 29
- Partial Renewal
- Partial Renewal - Online
- Partial Renewal ndash Paper
- Partial Renewal ndash Paper
- Partial Renewal
- Extensions of Time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time No change
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Fee for Extensions of time
- Fee for Extensions of time
- Fee for Extensions of time
- Appointment of a Trademark Agent or an Associate Trademark Agent
- Slide Number 56
- Slide Number 57
- Slide Number 58
- Slide Number 59
- Slide Number 60
- Slide Number 61
- Slide Number 62
- Slide Number 63
- Slide Number 64
- Slide Number 65
- Filing a Divisional Application
- Slide Number 67
- Slide Number 68
- Slide Number 69
- Inherent Distinctiveness
- Types of Distinctiveness
- Types of Distinctiveness
- What is inherent distinctiveness
- The Assessment
- The Assessment
- The Assessment
- The Assessment
- The Assessment
- The Assessment
- The Assessment
- Raising Objection
- Raising Objection
- Raising Objection
- Applications not advertised
- Examples
- Geographic locations
- Geographic locations
- Geographic locations
- Names of colours
- Names of colours
- Names of colours
- English and French
- English and French
- Multiple surnames
- Multiple surnames
- Names and honorifics
- Names and honorifics
- Laudatory
- Laudatory
- Internet TLDs and URLs
- Internet TLDs and URLs
- Internet TLDs and URLs
- Internet TLDs and URLs
- Internet TLDs and URLs
- Forms of business association
- Forms of business association
- Generic designs
- Generic designs
- Generic designs
- One or two lettersnumbers
- One or two lettersnumbers
- One or two lettersnumbers
- One or two lettersnumbers
- One or two lettersnumbers
- One or two lettersnumbers
- Generic information
- Generic information
- Generic information
- Other examples
- Overcoming Objection
- Overcoming Objection
- Acquired Distinctiveness
- WIPO Irregularities
- Slide Number 124
- Slide Number 125
- Slide Number 126
- Slide Number 127
- Slide Number 128
- Slide Number 129
- Slide Number 130
- Slide Number 131
- Responding to WIPO Irregularities
- Slide Number 133
- Slide Number 134
- Slide Number 135
- Slide Number 136
- Slide Number 137
- Slide Number 138
- Slide Number 139
- Slide Number 140
- Slide Number 141
- A Few More Madrid Items
- Slide Number 143
- Slide Number 144
- Slide Number 145
- Slide Number 146
- Slide Number 147
- Slide Number 148
- Slide Number 149
- Slide Number 150
- Slide Number 151
- Slide Number 152
- Slide Number 153
- Slide Number 154
- Slide Number 155
- Slide Number 156
- Slide Number 157
- Slide Number 158
- Slide Number 159
- Slide Number 160
- Questions
- Thank youFor more information visitwwwcipogccatm
- Slide Number 163
-
- Canadarsquos Trademark Regime A Review since CIF
- Presentation Overview
- Slide Number 3
- Slide Number 4
- The Recommended Steps to Renewal
- Basic Renewal Fee
- 441(1) Notice
- Slide Number 8
- Slide Number 9
- Slide Number 10
- Slide Number 11
- Slide Number 12
- Slide Number 13
- Slide Number 14
- Slide Number 15
- Slide Number 16
- Slide Number 17
- Slide Number 18
- Slide Number 19
- Slide Number 20
- Slide Number 21
- Slide Number 22
- Slide Number 23
- Slide Number 24
- Slide Number 25
- Additional Renewal Fees
- Slide Number 27
- Renewal Fees
- Slide Number 29
- Partial Renewal
- Partial Renewal - Online
- Partial Renewal ndash Paper
- Partial Renewal ndash Paper
- Partial Renewal
- Extensions of Time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time No change
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Extensions of time
- Fee for Extensions of time
- Fee for Extensions of time
- Fee for Extensions of time
- Appointment of a Trademark Agent or an Associate Trademark Agent
- Slide Number 56
- Slide Number 57
- Slide Number 58
- Slide Number 59
- Slide Number 60
- Slide Number 61
- Slide Number 62
- Slide Number 63
- Slide Number 64
- Slide Number 65
- Filing a Divisional Application
- Slide Number 67
- Slide Number 68
- Slide Number 69
- Inherent Distinctiveness
- Types of Distinctiveness
- Types of Distinctiveness
- What is inherent distinctiveness
- The Assessment
- The Assessment
- The Assessment
- The Assessment
- The Assessment
- The Assessment
- The Assessment
- Raising Objection
- Raising Objection
- Raising Objection
- Applications not advertised
- Examples
- Geographic locations
- Geographic locations
- Geographic locations
- Names of colours
- Names of colours
- Names of colours
- English and French
- English and French
- Multiple surnames
- Multiple surnames
- Names and honorifics
- Names and honorifics
- Laudatory
- Laudatory
- Internet TLDs and URLs
- Internet TLDs and URLs
- Internet TLDs and URLs
- Internet TLDs and URLs
- Internet TLDs and URLs
- Forms of business association
- Forms of business association
- Generic designs
- Generic designs
- Generic designs
- One or two lettersnumbers
- One or two lettersnumbers
- One or two lettersnumbers
- One or two lettersnumbers
- One or two lettersnumbers
- One or two lettersnumbers
- Generic information
- Generic information
- Generic information
- Other examples
- Overcoming Objection
- Overcoming Objection
- Acquired Distinctiveness
- WIPO Irregularities
- Slide Number 124
- Slide Number 125
- Slide Number 126
- Slide Number 127
- Slide Number 128
- Slide Number 129
- Slide Number 130
- Slide Number 131
- Responding to WIPO Irregularities
- Slide Number 133
- Slide Number 134
- Slide Number 135
- Slide Number 136
- Slide Number 137
- Slide Number 138
- Slide Number 139
- Slide Number 140
- Slide Number 141
- A Few More Madrid Items
- Slide Number 143
- Slide Number 144
- Slide Number 145
- Slide Number 146
- Slide Number 147
- Slide Number 148
- Slide Number 149
- Slide Number 150
- Slide Number 151
- Slide Number 152
- Slide Number 153
- Slide Number 154
- Slide Number 155
- Slide Number 156
- Slide Number 157
- Slide Number 158
- Slide Number 159
- Slide Number 160
- Questions
- Thank youFor more information visitwwwcipogccatm
- Slide Number 163
-