Trademark Practice Committee (TMPC) Record of Discussion - December 12, 2018


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

1. Opening Remarks

The Co-Chairs welcomed participants and conducted a round table to introduce everyone.

2. Coordination with CIPO: removal of Representative for Service information

CIPO provided an update on the solution to facilitate the implementation of the legislative changes removing the Representative for Service information on trademark files. CIPO has clarified that, where applicable, all Representative for Service information will be migrated to the Agent field before , the coming into force date of the amended trademarks legislative framework.

3. Updated list of Examiners and Managers

The Trademarks Examination Unit has undergone a restructuring including the hiring of new examiners. As a result, a new examiner contact list is being drafted and will be shared with IPIC members once it is finalized. In addition, CIPO is looking to have this information available online where it will be accessible and regularly updated. As always, IPIC members are encouraged to contact a Manager or a Deputy Director of Examination if they are unable to reach an examiner.

Action item: CIPO will send an updated examiner contact list once it is finalized.

4. Update on new Practice Notices

CIPO confirmed that the revised practice with respect to names and surnames under paragraph 12(1)(a) of the Trade-marks Act will take effect on . CIPO 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 the requirement of finding a minimum listing of 25 entries of the name or surname in telephone directories has been removed.

In addition, CIPO has finalized drafts of three new practice notices to be published to the resource page sometime in early 2019.

The first of these provides that evidence submitted under subsection 32(1) of the Trademarks Act at examination to establish that a trademark was distinctive at the filing date must be submitted to the Registrar of Trademarks by way of affidavit or statutory declaration. However, any evidence consisting of a document or extract from a document that is in the official custody of the Registrar may be submitted by way of a certified copy referred to in section 54 of the Act.

The second practice notices relates to the removal of bases of registration in trademark applications that have been filed but not advertised before . While the Office will not require that any bases of registration be removed from these applications, they will not appear in the particulars of the advertisement once the amendments to the Act have come into force. If the applicant wishes to remove any bases, the Office will accept amendments to applications to do so, but only prior to advertisement.

The final practice notice relates to extensions of time at examination and extensions of time to respond to a notice issued under section 44.1 of the Trademarks Act. For extensions of time at examination, it will be possible to request additional time to respond for the reason that 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.

5. Place of Origin - Paragraph 12(1)(b) of the Trade-marks Act

CIPO’s Examination Unit and Quality and Continuous Development Unit were provided a briefing to ensure proper application of the test for trademarks that consist of, or include geographical locations. Members are encouraged to continue to communicate with the Office and with Managers and Deputy Directors of Examination if they have any questions or concerns on the application of the practice notice.

6. Legislative changes in Bill C-86 re: agents

IPIC members were interested to know how CIPO will correspond with agents once the legislative amendments contained in Bill C-86 come into force. Unfortunately, CIPO is unable to provide any information as this time.

Action item: This topic will be put forward at a future TMPC.

7. General update by the Trademarks Branch

The Trademarks Branch is undergoing a transformation with the aim of becoming a premier trademark office by 2022.

To ensure there is adequate capacity once Canada joins the Madrid Protocol, the Office has a plan to gradually hire a total of 40 new examiners. This plan entails recruiting examiners with higher credentials and relevant work experience at the outset, and nurturing that talent with a bolstered Quality and Continuous Development Unit.

In addition, to raise the level of consistency vis-à-vis stakeholders, the Policy and Legislation Unit is providing important training on new policies and practices related to the legislative changes contained in Bill C-31 to establish a uniform understanding and application of the intended policy.

By improving the capacity of examiners as well as the quality of the examination process, there will be a corresponding improvement in timeliness. The turnaround times that stakeholders currently experience will gradually decrease.

Finally, the transformation involves raising the level of professionalism within the Office. The vision is to look for efficiencies, remove redundant processes or practices, while also improving the lines of communication between examiners and trademark practitioners. Ultimately, the goal is to provide quality and timely trademark rights.

IPIC members expressed interest to hold a more fulsome discussion on this transformation at either the next TMPC or during a special teleconference.

8. Closing Remarks

It is proposed that the TMPC next meet in early 2019. A call out for a date and proposed agenda items will be held in January 2019.