Sep 22 2020

There are several aspects of Canada's trademark registration process that are challenging, as compared to other countries. Because Ridout & Maybee LLP has been operating for over 125 years, we have developed practical solutions for dealing with these complications. While our clients’ associated frustrations have not been eliminated, we are happy to report that we have been able to drastically reduce them.

Description of Goods & Services

The amount of detail required in the Canadian description of goods and services (“Description”) often exceeds that in the United States of America. An allegation of an excessively vague Description is by far the most common component of an office action (called “examiner’s report” in Canada).  If the examiner raises several such issues, there is a good chance a second office action will issue with objections to the revised Description.

Many types of goods and services are not addressed in the Goods & Services Manual ("GS Manual")¹ on the Canadian Intellectual Property Office's ("CIPO") website. As a result, it is not possible to ensure that a revised Description will be accepted by the examiner. Not only does this draw out the registration process, it also increases the time we spend working on the file. While the former cannot be controlled, Ridout & Maybee LLP usually reduces (or, sometimes, entirely writes off) its fees for responding to a second or third office action involving a Description. We have also learned that the best approach is to recommend a revised Description and seek the client’s feedback, rather than ask the client to provide a revised Description.

Nice Classification of Goods & Services

For applications filed in Canada after June 16, 2019, all goods and services must be classified according to Nice. For several years prior, Nice classification was optional in Canada applications. As a result, recently-issued registrations may or may not include Nice classification. Unclassified registrations may be classified at any time at the request of the trademark owner, and CIPO may require classification with written notice. Because a registration will be cancelled if CIPO’s requirement for classification is not met, we recommend voluntary classification sooner rather than later.

For many years, CIPO informally classified the goods/services in all existing registrations. The CIPO-operated trademark database² shows whether a registration is formally classified in the following manner:

Formally Classified	Informally Classified
(Click image to enlarge)	(Click image to enlarge)

 

A review of the GS Manual will reveal that Nice classification in Canada is not identical to WIPO and TM5, although there is abundant overlap. Due to the high level of specificity required for Canadian Descriptions — and the lack of experience held by our examiners — Nice classification can be somewhat complicated. We have tariff fees for classifying goods/services, but those fees many be reduced depending on the number of items in each class and those items’ complexity. We recommend not spending too much time on the first round of classification because if CIPO has any objections, they will provide a recommended reclassification. Typically, we charge no fee for reporting and accepting CIPO’s recommendations.

Allegation of No Inherent Distinctiveness

When Canada new trademark law came into effect in January 2019, CIPO began rejecting applications on the basis that the trademark lacked inherent distinctiveness. Such rejections are being issued when trademarks are composed of a (1) laudatory word(s), (2) geographical location, (3) generic design, (4) generic description of goods/services, (5) single or double letter or number, as well as other types of words. If the examiner does not withdraw the objection, the only way to obtain a registration is to provide proof of acquired distinctiveness per each province of Canada. Because an extremely large amount of evidence is required to prove acquired distinctiveness, the costs are high and success may be unachievable.

As a result, the threshold for registering several types of trademarks has risen significantly in Canada. We are now raising this issue with our clients when we are instructed to file a new application. As well, we are developing our techniques for overcoming at least some of the examiner’s inherent distinctiveness objections; success has been achieved in several filings. Nevertheless, full clarity is presently unavailable due to the unfamiliar nature of the new law. 

Official Marks

Government-funded organizations can “register” official marks, which do not qualify as “trademarks, but do enjoy overlapping rights. In fact official marks have a broader ambit of protection in that the goods and services in association with which they are used have no bearing on the assessment of resemblance with other trademarks. If an examiner alleges resemblance with an official mark there are three options for responding: (1) submit arguments of insufficient resemblance; (2) obtain the consent of the official mark owner; or (3) cancel the official mark registration.

Regarding option (1), minor differences can be sufficient to avoid a finding of resemblance. We recently had a resemblance allegation revoked even though our client’s recently applied-for mark was composed of three letters in the same order as the four letters in the official mark. Regarding option (2), since Ridout & Maybee LLP has been in business for so long, we are “connected” with almost every other Canadian law firm that provides intellectual property services. Very quickly can we determine whether the official mark owner will provide its consent. Option (3) requires court proceedings, so it is expensive and drawn out, and the bases for cancellation are narrow. As a result, option (3) is rarely pursued.

2-Year Period for Initial Examination

These days, CIPO is typically examining applications two years after they are filed, which is a long wait compared to most other countries.  Since there is no procedure for expediting the process, many clients find this extremely irritating. We wish we could find a way to speed up the examination process, but we cannot, nor can our colleagues in other firms. Steering away from office actions (e.g., by only using good/services approved in the GS Manual and conducting pre-filing clearance searches) is the only plausible strategy to avoid even further delays.

So now it is clear that the Canadian trademark registration process is changing, and somewhat frustrating. We at Ridout & Maybee LLP have come to grips with this reality, and we are focused on developing pragmatic strategies for registering our clients’ trademarks. Because the legal issues we deal with are confined to intellectual property, our level of day-to-day experience is as high as it gets.

This article is for information purposes only and does not constitute legal or professional advice

Author: Paul Tackaberry

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¹ www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr03968.html

² www.ic.gc.ca/app/opic-cipo/trdmrks/srch/home?lang=eng

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Tags: CIPO, Nice Classification System, Paul Tackaberry, Trademarks