On February 23, 2012, the Canadian Intellectual Property Office (CIPO) published proposed amendments to the Trade-Marks Regulations, on which comments from the public will be accepted until April 23, 2012.
Some of the more notable changes are:
- Non-traditional Marks: The proposed amendments would allow for the registration of holograms, motion and sound marks. Historically, CIPO has not allowed applications to register these types of marks. Holograms, motion and sound marks have all been registered in both the United States and Europe. Recently, as a result of an Order issued in the Federal Court case Metro-Goldwyn-Mayer Lion Corp. v Canada (A-G), CIPO issued a practice direction that it is now accepting applications for sound marks (and summarized in this issue of E-TIPS® by Darren Hall here).
- Descriptions: The proposed amendments would allow an applicant to describe the details of a mark that it wishes to register.
- Colour: The proposed amendments would no longer require an applicant to submit a black-and-white representation of a colour mark. Rather, the applicant would be required to submit a colour drawing when applying for a colour mark and would be permitted to make reference to internationally recognized colour systems.
- Timing of Evidence and Arguments: The proposed amendments would make the sequence of events in opposition proceedings more consistent with those in litigation proceedings. The proposed amendments would no longer allow an applicant to cross-examine upon an opponent’s evidence before it submits its own evidence. Rather, under the proposed amendments, both parties would have a common deadline for the completion of cross-examinations. The proposed amendments would also require the opponent to file its written argument before the applicant, which would afford the applicant the opportunity to prepare its written argument in response to the opponent’s argument.
- Amendments to Applications: An applicant would be permitted to make more amendments prior to the application being advertised than do the current regulations. Previously, the date of first use could only be changed to an earlier date where evidence was submitted to justify the change. Under the proposed amendments, an applicant would no longer be required to file evidence to make this amendment. The proposed amendments also allow an applicant to amend its application from being based on proposed use to being based on prior use. The reverse change from prior use to proposed use will continue to be allowed.
- Communications: The proposed amendments give the Registrar the authority to accept evidence by electronic filing and to accept a statement of opposition by facsimile or other electronic means.
E-TIPS® ISSUE
12 04 04
Disclaimer: This Newsletter is intended to provide readers with general information on legal developments in the areas of e-commerce, information technology and intellectual property. It is not intended to be a complete statement of the law, nor is it intended to provide legal advice. No person should act or rely upon the information contained in this newsletter without seeking legal advice.
E-TIPS is a registered trade-mark of Deeth Williams Wall LLP.
