- Mr. Mesmin Pierre, Canadian Intellectual Property Office (CIPO)
- Ms. Coleen Morrison, Intellectual Property Institute of Canada (IPIC)
1. Opening Remarks
The Co-Chairs Mr. Mesmin Pierre and Ms. Coleen Morrison welcomed the committee members and announced the items on the agenda.
2. Recovery Plan & Trademark Inventory Backlog
Mr. Mesmin Pierre presented an update on the CIPO Recovery Plan measures that were implemented starting to address the backlog of trademark applications.
The turnaround time for the initial examination of applications filed using the pre-approved list of goods and services has been reduced by 10 months compared to applications filed without using the pre-approved list.
Mr. Richard York provided a comparison of the volume of applications filed using the pre-approved list and applications filed not using the pre-approved list between last fiscal year (2020-2021) and this fiscal year (2021-2022).
Twenty-one new examiners have been recruited and started training in the last two weeks.
Mr. Mesmin Pierre anticipates next steps of the Recovery Plan to include the ability to use advanced technology and automation to begin to address the gap with current measures.
Ms. Vanessa Musca presented an overview of the expansion of the Goods and Services Manual and encouraged its use. In total, 18,655 terms have been added to the Manual in both official languages.
Mr. Mesmin Pierre gave the dates of trademark applications in examination and shared a vision of a more modern Office.
3. E-Service Enhancements
Ms. Manon Michaud presented a demonstration of the enhancements to the Trademark E-Services. Specifically, she demonstrated how to complete several types of transactions (e.g., ownership changes, agent appointments and changes to security and license agreements).
Two webinars will be held in both French and English on and on . Details of the sessions will be sent via the trademark mailing list.
Ms. Coleen Morrison had several questions and suggested collecting them and following up with Ms. Manon Michaud.
Ms. Manon Michaud confirmed the launch of the e-services platform at 8:30 am on (launch was subsequently postponed and completed on January 6).
4. Secondary Examination
On average, the turnaround time for secondary examination (i.e., treatment of mail files) is 3 months for domestic applications. Current data illustrates that mail correspondence is actioned by the Office within an average of 2.9 months. A review of the current mail inventory is underway to identify files with a turnaround time above 3 months. Clients are invited to call the manager or the examiner on file by phone if the service standard has passed.
Action Item: CIPO will circulate an updated list of examiners.
5. Office Actions
Questions were raised with respect to the format of Examiners' reports, in particular for Madrid Protocol Applications. CIPO indicated that documents communicated between CIPO and WIPO are available in English and French in .XML and .HTML formats on the Madrid Monitor. It is strongly recommended that members register to receive notifications of updates and changes on international registrations via the Madrid Monitor.
CIPO indicated that the formatting of, for example, total provisional refusals is designed to meet the requirements of WIPO's model forms for Madrid Protocol Applications. The content is limited by design and lists the goods and services that are not registrable (in contrast to national trademark applications which generally include the full statement of goods and services with objections indicated by bolding and underlining).
Nice classes provided in the Notification of Designation are set and approved by the International Bureau and cannot be added, changed or removed by CIPO.
6. 12(1)(a) objections
CIPO is focused on onboarding and training new examiners as well as the continuous development of experienced examiners.
Action Item: CIPO to host a collaborative webinar on paragraph 12(1)(a) of the Trademarks Act, which will include the perception of the public as an important component of the test.
7. Opposition Board
Mr. Martin Beliveau presented statistics with respect to trademark oppositions. The delays resulting from the pandemic have been resolved. The current timeframe for section 45 hearings is 24 months, with an objective of further reducing it to 18 months by the spring of 2022. With respect to section 45 non-hearings, a decision is currently issued in less than 18 months, which will be reduced to 12 months by late summer or early fall of 2022. Opposition hearings take 16-20 months to schedule. The Trademark Opposition Board has hired new staff in 2021 with a plan to hire additional staff in 2022. The inventory awaiting decision has been reduced by 20% compared to last year.
The next meeting will be held in April 2022. Mr. Mesmin Pierre thanked the members for their support and continued collaboration.