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ISED Citizen Services Centre
Innovation, Science and Economic Development Canada
C.D. Howe Building
235 Queen Street
Ottawa, ON K1A 0H5
Canada
Telephone (toll-free in Canada): 1‑800‑328‑6189
Telephone (international): 613‑954‑5031
TTY (for hearing impaired): 1‑866‑694‑8389
Business hours: 8:30 a.m. to 5:00 p.m. (Eastern Time)
Email: ised-isde@ised-isde.gc.ca
Copy of this publication
To obtain a copy of this publication, or to receive it in an alternate format (Braille, large print, etc.), please fill out the Publication Request form or contact:
ISED Citizen Services Centre
Innovation, Science and Economic Development Canada
C.D. Howe Building
235 Queen Street
Ottawa, ON K1A 0H5
Canada
Telephone (toll-free in Canada): 1‑800‑328‑6189
Telephone (international): 613‑954‑5031
TTY (for hearing impaired): 1‑866‑694‑8389
Business hours: 8:30 a.m. to 5:00 p.m. (Eastern Time)
Email: ised-isde@ised-isde.gc.ca
Renewal of Registrations
Renewal process for registrations for which the goods or services have not been grouped according to the classes of the Nice Classification system.
The Recommended Steps to Renewal
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
$400 if paid using CIPO e-service
$500 otherwise
44.1(1) Notice
Once the renewal has been processed, the Registrar will send a notice under subsection 44.1(1) of the Act requiring the registered owner to group the goods or services according to the classes of the Nice Classification.
6 Months to Provide Statement
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 44.1(1) notice.
Statement Reviewed
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).
Unacceptable Statement
If the examiner determines that the Nice classification information is not acceptable, a report will issue which:
provides guidance as to the appropriate class for a given good or service; and
Specifies the amount of any additional required fees
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 44.1(4) of the Act.
Acceptable Classification
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.
Acceptable Classification
If any additional fees are required, an adjusted renewal fee notice will be issued.
These fees must be paid within two months of this notice.
Failure to pay these fees will result in the expungement of the registration.
Pay Adjusted Renewal Fees Online
Failure to Furnish
If, following the issuance of a notice under subsection 44.1(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 44.1(3) giving the registered owner 2 months to comply.
If, following the issuance of a notice under subsection 44.1(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.
Authority to Request Amendment of Statements
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.
Renewal Process
(Goods or services not classed at renewal)
The Inadvisable Steps to Renewal
Scenario #1
The registration is renewed and the base fee for one class is paid using the online renewal service; and
on the same day, the goods or services are grouped according to the Nice Classification using the online service; and
on the same day, the fees for the additional Nice classes (as calculated by the registered owner) are submitted by paper.
Scenario #2
The registration is renewed and the base fee for one class is paid using the online renewal service; and
on the same day, the fees for additional Nice classes (as calculated by the registered owner) are submitted by paper; however
the goods or services have not been grouped and classed
Scenario #3
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).
Additional Renewal Fees
The 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.
Renewal process for registrations for which the goods or services have been grouped according to the classes of the Nice Classification system.
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.
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.
Partial Renewal - Online
A partial renewal can be submitted online only if the:
Goods or services in respect of which the trademark is registered are grouped according to the classes of the Nice Classification.
All the goods or services grouped in a class are being renewed, and
the remaining goods or services are being deleted.
Partial Renewal – 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.
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.
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.
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.
Automatic or unwarranted extensions of time slow down the registration process considerably.
To put things in perspective, in 2018 the Office granted more than 11,000 requests for extension of time at the examination stage alone.
The practice notice on extensions of time was amended on January 17 to remove the first six-month extension following an examiner’s report that was available for practically any reason.
Going forward, the Office will generally not grant an extension of time to file a response to an examiner’s report unless the applicant can demonstrate exceptional circumstances justifying why it is not yet possible to file a proper response.
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 examiner’s report unless exceptional circumstances exist will only apply to trademark applications for which an examiner’s report has been issued on or after the publication date of this amended practice notice.
As a result, for applications for which an examiner’s 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 examiner's report, if the request is justified.
The following are examples of what could amount to an exceptional circumstance that would justify an extension of time:
No change
Recent change in trademark agent
There has been a very recent change in the appointed trademark agent and the agent requires time to become familiar with the file.
Circumstances beyond the control of the person concerned
Examples include illness, accident, death, bankruptcy, or other serious and unforeseen circumstances.
Transfer
There 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.
Division of a Protocol application
The 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.
Amended
Opposition
A co-pending and confusing trademark is the subject of a pending opposition proceeding.
Section 45
A registered trademark cited as confusing is subject to a pending section 45 proceeding.
Official mark
The applicant is in the process of actively negotiating a consent from the holder of an official mark.
New
Respond to an objection which could lead to a refusal under paragraphs 37(1)(b), (c) or (d) of the Act
The 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.
Compile evidence of distinctiveness under subsection 32(1) of the Act
The 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.
Fee for Extensions of time
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.
Therefore, the fee is not required to request an extension of time to respond to an examiner’s report, as the period of time to respond is not fixed in either the Act or its Regulations.
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 is fixed in section 34 of the Regulations.
Appointment of a Trademark Agent or an Associate Trademark Agent
Temporary Appointment
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 CIPO’s website by including the details of temporary appointment and subsequent revocation in the "Closing details" section.
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.
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.
Suggested wording for a temporary appointment and subsequent revocation can also be found in the relevant Practice Notice on the CIPO website.
Appointment of Agent on Transfers
The Office has been receiving requests for transfers under section 48 of the Act in which it is unclear on behalf of whom the request is initiated (i.e. the transferee or the transferor).
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.
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.
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.
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.
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.
As there is currently no dedicated e-service for filing a divisional application, applicants have two options:
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
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.
Inherent Distinctiveness
Types of Distinctiveness
Section 2 of the Trademarks Act:
Distinctive, 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.
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.
What is inherent distinctiveness?
Inherent distinctiveness refers to the intrinsic ability of a trademark to distinguish the source of goods or services with which it is associated.
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources.
The Assessment
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.
It must also take into account the first impression of the average Canadian consumer of those goods or services.
As stated by the Federal Court in ITV Technologies Inc. v. WIC Television Ltd.:
"The 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 trade."
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 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.
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.
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.
A trademark is inherently distinctive when nothing about it refers the consumer to a multitude of sources.
Raising Objection
When raising an objection, examiners must provide a clear explanation why the Registrar’s 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.
Examiners must indicate whether the objection relates to all the associated goods or services, or only to some.
If the objection is being raised due to use of the trademark by others in the marketplace, the results of the examiner’s research should be provided to the applicant.
These results should be limited to use which is likely to be seen by Canadian consumers.
Applications not advertised
All applications not advertised by June 17, 2019 require reassessment by an Examiner for inherent distinctiveness.
Examples
Geographic locations
Names of colours
English and French
Names and Surnames
Laudatory
Internet TLDs
Forms of business association
Generic designs
1 & 2-letter / -number
Generic information
Other examples
Geographic locations
Trademarks which are primarily geographic locations are generally not inherently distinctive, even if the place is not known for those goods or services.
London
in association with "operation of drugstores and department stores".
Elbow
in association with "retail sale of snowmobiles".
Names of colours
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.
White
in association with "paper" or "toothpaste".
Red
in association with "night club services".
English and French
Trademarks that consist of words or phrases that are clearly descriptive in both English and French lack inherent distinctiveness.
Furniture Store / Magasin De Meubles
in association with "retail sale of furniture".
Multiple surnames
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.
Philpot Johnson Spratley
in association with "operation of vehicle dealership".
Names and honorifics
The addition of common honorifics, either pre- (e.g. Mrs., Mr., Dr., Dame, Sir) or post-nominally (e.g. ESQ.) to a surname or full name will generally not render a trademark inherently distinctive.
Mr. Bob Johnson
in association with "tourist agencies".
Laudatory
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.
Ultimate
Expert
Quality
Wonderful
World Famous
Internet TLDs and URLs
A trademark composed solely of a top-level domain ("TLD") 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.
.BIZ
in association with "domain name registration services".
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.
Www.Postersforsale.Com
in association with "art posters" and "sale of art posters".
Www.Pepsi.Com
in association with "soft drinks".
Forms of business association
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.
Greenhouse Tools Ltd.
in association with "hand tools" or "retail sale of gardening equipment".
Generic designs
A trademark that consists of a design common to the trade lacks inherent distinctiveness unless it is depicted in a special or fanciful manner.
in association with "wine" or "grapes".
in association with "healthcare services".
One or two letters/numbers
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.
X
in association with "hotel services".
in association with "chewing gum".
Two-letter or -number trademarks commonly used in a specific field are generally not inherently distinctive.
LE
in association with "motor vehicles".
39
in association with "long-distance calling card services".
Generic information
Trademarks that serve only to provide generic information about, or on, any goods or services are generally not inherently distinctive.
Contents Are Hot
in association with "beverage containers" and "takeout restaurant services".
Fragile
in association with "printed labels" and "boxes for packaging".
I Ottawa
in association with "t-shirts" and "retail sale of novelty items".
Overcoming Objection
An applicant may overcome an objection under subsection 32(1) by:
submitting arguments that the trademark has some inherent distinctiveness;
filing evidence that the trademark had acquired distinctiveness in Canada at the filing date of the application; or
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.
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.
For any other question regarding an AIR that is pending with CIPO, send an email to: madrid@canada.ca
Status of AIR after certification by CIPO
Status of AIR after certification by CIPO
Once the AIR is registered and has an IR #, changes to the IR must be made directly with WIPO, for example:
Subsequent designation
Change of ownership
Change of address
Limitation
Cancellation
WIPO’s "Contact Madrid" e-service
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 (Examiner’s Report)
Must be sent to CIPO via WIPO by way of Limitation (MM6 Form)
When Canada is designated, CIPO sends a courtesy letter to the WIPO representative informing them of CIPO’s 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
If a Canadian trademark agent is not appointed, the following are sent directly to the applicant:
courtesy copies of some of the notifications sent to WIPO required by the Madrid Protocol
all future correspondence from CIPO
When filing an AIR, "Filing language" must be the same as the language of the goods or services in the basic application/registration.
By default it is language of user’s profile
Pop-up message in MeF in the "Basic application or registration" tab:
If filing language was not changed in the "Basic application or registration" tab - error message in "Goods and services" tab
Can no longer modify filing language (greyed out/drop-down menu doesn’t open)
Must create a new AIR and select correct filing language
"Filing language" is different from "correspondence language" with WIPO/CIPO/EUIPO that can be different from the language of goods or services
AIR priority date can be the basic application filing date if within 6 month period
Do not wait until the last day to:
File the AIR - may lose priority date!
Respond to the WIPO Irregularity Notification - CIPO needs time to review and correct the response if necessary
Except as otherwise specifically noted, the information in this publication may be reproduced, in part or in whole and by any means, without charge or further permission from the Department of Industry, provided that due diligence is exercised in ensuring the accuracy of the information reproduced; that the Department of Industry is identified as the source institution; and that the reproduction is not represented as an official version of the information reproduced, or as having been made in affiliation with, or with the endorsement of, the Department of Industry.
For permission to reproduce the information in this publication for commercial purposes, please fill out the Application for Crown Copyright Clearance or contact the ISED Citizen Services Centre mentioned above.
Ⓒ Her Majesty the Queen in right of Canada, as represented by the Minister of Industry,
2020
Aussi offert en français sous le titre Le régime de marques de commerce du Canada : Une revue depuis l’entrée en vigueur.