Trademark Practice Committee Agenda
Record of Discussion

Co-Chairs

  • Mesmin Pierre, Canadian Intellectual Property Office (CIPO)
  • Marijo Coates, Intellectual Property Institute of Canada (IPIC)

1. Opening Remarks

The Co-Chairs Mesmin Pierre and Marijo Coates welcomed the committee members and started the meeting.

2. Recovery Plan Update

Mesmin Pierre provided a high-level update on the CIPO Trademark Recovery Plan.

The Director of Operational Services provided an update on E-Correspondence. E-Correspondence will launch in January of 2023 and CIPO will be providing sessions on how to make the change in their agent portal.

The Deputy Director of Policy and Legislation presented the research sheet project and its positive impact on examination.

3. E-Services

The Director of Operational Services did an overview of IT improvements that will be done in 2023.

Action item: CIPO to look into changing the wording in e-services to help agents when submitting a merger document.

4. Misdirected Mail

Regarding a question from the Committee: CIPO invites agents to contact its office immediately if they receive misdirected mail.

Action item: Following the meeting Marijo Coates will share the contact information of the Director of Operational Services with members.

5. Removal of agents

Regarding a question from the Committee: CIPO provided a response about the removal of agents in Canadian designated applications when ownership changes are made at WIPO. CIPO's intention is to deliver this project by the end of fiscal year.

Action item: CIPO to inform agents once the project is completed.

6. Change in Title and change in name

Regarding a question from the Committee: CIPO confirmed that when a change in title is requested by a party who is not the agent for the registrations/applications, the recordal confirmation goes to the agent of record and the requesting agent.

Regarding a question from the Committee: CIPO confirmed that a change in name with respect to a public authority is not recorded.

7. Official Marks

Regarding a question from the Committee: CIPO provided an update on the status of the official marks practice notice as a result of Bill C-86. The online consultation period is now closed and the next step for CIPO will be to publish the comments received.

8. Goods and Services Manual

Regarding a question from the Committee: CIPO provided a debrief of how the office updates the list of accepted terms.

Regarding a question from the Committee: CIPO provided guidance on the difference between an approved and a pre-approved term.

9. Backlog

The Director General of the Trademarks and Industrial Designs Branch provided an update on the Branch's hiring plan.

10. TM video amendments

CIPO presented the process and goal of having TM video amendments. CIPO is currently in the pilot stage and will launch this option in January 2023.

11. Statistics

The Director of Operational Services presented statistics to the members.

Action item: CIPO to share the statistics following the meeting.

12. Questions

A decision was made to discuss Section 41 of the Trademarks Act at the next meeting.

13. Conclusion

The Co-Chairs agreed to hold the next meeting in March 2023.