Trademark Practice Committee - September 20, 2018


  • Mesmin Pierre (CIPO)
  • Donna White (IPIC)

1. Opening Remarks

The Co-Chairs welcomed participants and Donna White from IPIC was formally introduced as the new Co-Chair, replacing Henry Lue, whose term comes to an end in October 2018.

2. New examiners

CIPO has hired 10 new trademark examiners who began training on September 10, 2018. This represents the first step in the examiner recruitment campaign and more examiners will be hired in the coming year to ensure that the Trademarks Office has adequate capacity when the modernized trademark legislative framework comes into force in 2019.

CIPO will continue to provide regular updates as the recruitment campaign rolls out.

3. New Practice Notices

CIPO will shortly launch a new resource page, which includes final drafts of new practice notices, where stakeholders can go and access information and guidance on the new processes and procedures that will apply once the amended trademark legislative framework comes into force in 2019.

The page will be updated regularly as outstanding practice notices and information guides are finalized. At this time, the documents are in draft form and are provided for informative purposes only.

4. Consent

Following the Federal Court ruling in Holding Benjamin et Edmond de Rothschild, Pregny Anonyme v Attorney General of Canada, (2018 FC 258) dated March 6, 2018, the Trademarks Branch has revised sections III.3.1 and III.3.2 in chapter III of the Trademarks Examination Manual.

In this decision, the Court ruled on the analysis of the likelihood of confusion when consent is submitted and found that the value of consent is limited, particularly due to the fact that the Registrar also has the mission of protecting the public consumer.

A copy of the pertinent Manual sections was circulated to TMPC members prior to the meeting. In addition, examiners will be briefed on the decision and informed of how to raise a confusion objection in light of this decision. An internal working group will be established that will review challenging files to ensure consistent understanding and application of the case law.

5. 12 (1) (a)

CIPO confirmed that it will continue to apply the test of whether a trademark is primarily merely the name or surname of an individual who is living or has died within the preceding thirty years in Canada, but will remove the requirement of a minimum listing of 25 entries of a name or surname in telephone directories.

In view of comments from members, it was decided that the new practice notice would be implemented and published in January 2019.

6. Digitization of trademark files

The retention and disposition provisions in sections 27 and 28 of the Combating Counterfeit Products Act (Bill C-8) and section 358.1 of the Economic Action Plan Act 2014, No.1, (Bill C-31) prescribe how information is to be managed by the Registrar of Trade-marks, and provide the Trademarks Office with clear legal authority to dispose of trademark files six years after a trademark has been refused, abandoned or expunged.

The Trademarks Office at the Canadian Intellectual Property Office (CIPO) currently keeps all paper records in perpetuity. With these amendments, the Office now has the legal authority to dispose of paper files related to trademarks that have been determined to no longer hold any value after a period of six years of inactivity. However, the Office will not be initiating the destruction of any paper records until it has a fully implemented digital repository system. Only after an inactive paper record has been digitized will it be considered for disposal.

CIPO, in partnership with Public Services and Procurement Canada (PSPC), has already begun transferring records for digital conversion. This initiative will be completed in phases over three to four years with over 1.6 million records being digitized.

7. Trademarks Regulations

The final draft of the Trademarks Regulations is scheduled for Canada Gazette, Part II publication in the fall. It is at this time that a coming into force date of the amended trademarks legislative framework will be made public.

CIPO will continue to engage with stakeholders to support the drafting of guidance documents and practice notices to assist trademark practitioners become more familiar with the processes and obligations of Canada’s modernized trademark regime.

8. Closing Remarks

The next TMPC will be scheduled for Wednesday December 12, 2018 from 2:00 – 3:00pm. A formal invitation with teleconference call-in information will follow.

A call out for proposed agenda items will be held in November.