There’s Something About the 17th: The Tinkering Continues with More Canadian Trademark Practice Changes

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The Canadian Intellectual Property Office (“CIPO”) recently amended three Practice Notices and a Guidance Document related to applications and registrations for trademarks in Canada. These amendments provide:

  • some clarification as to the various ways in which CIPO will approach the requirement that registrations, as well as applications which were pending and unadvertised as of June 17, 2019, must group goods and services according to the Nice Classification System;
  • guidance on the practice of filing divisional applications; and
  • guidance on how a registered owner may make a temporary appointment of a Trademark Agent for certain purposes.

These changes are in addition to the changes which limit an applicant’s ability to obtain extensions of time to respond to an Examiner’s Report, previously summarized here.

Though Practice Notices and Guidance Documents do not have the force of law, they provide guidance on CIPO’s practices and its interpretation of Canada’s Trademarks Act (the “Act”) and its Trademarks Regulations (the “Regulations”). Practice Notices can therefore have a significant impact on day-to-day aspects of Canadian trademark prosecution.

Nice Classification

Certain of the revisions to the Practice Notices and Guidance Documents involve the requirement to group goods and services in existing registrations according to the Nice Classification System (“Nice”). Revisions necessitated by Nice have been incorporated into the Practice Notice entitled “Renewals”, as well as in a Guidance Document meant to provide an explanation of CIPO’s transitional practices following the June 17, 2019 statutory amendments, under which the Nice classifications came into effect in Canada.

Nice is an international system for grouping goods and services according to common characteristics, maintained by the World Intellectual Property Office (“WIPO”). Through Nice, WIPO has attempted to classify every good and service which is or could be the subject of a commercial endeavor within 34 categories of goods and 11 categories of services.

Owners of all existing registrations must group their goods and services within these categories, following receipt of a notice, issued under Section 44.1 of the Act, or else risk the expungement of their registrations. Such notices are sent by CIPO to an owner that has initiated renewal of a Canadian trademark registration, where Nice classes are not already set out in such registration – currently, that includes the vast majority of registrations in Canada.

The amended Practice Notice for Renewals clarifies that once an owner of a registration groups goods and/or services according to Nice, the Registrar does not have the authority to require amendment to the descriptions of these goods or services, for instance, to aid in assessing the validity of the proposed grouping. This is because similar requirements imposed during examination of applications are based on sections of the Act and the Regulations which grant the Registrar this authority for applications but not for registrations. While registered owners may redefine goods and services of their own initiative, provided the resulting amendment does not broaden the scope of goods and services, the Registrar is not permitted to require such redefinitions.

Where there is ambiguity as to whether goods or services should be included in one class or another, the Registrar will assume that the registered owner has correctly classified its goods or services, and interpret those goods or services accordingly.

Revisions to the Guidance Document on transitional provisions remove previous language which suggested that owners of applications which were advertised, but not registered, prior to June 17, 2019, would be required to group goods and services according to Nice after their registrations issued. The amendments clarify that the Registrar will not issue notices under Section 44.1 for new registrations – it will only do so upon renewal.

Divisional Applications

The second amendment affects the existing Practice Notice entitled “Divisional applications and the merger of registrations”. A “divisional application” is a new (to Canada) procedure available to applicants during Examination, in which an applicant may divide out certain goods and/or services included in an application from others. Following this division, the applications proceed separately until they can be merged as a single registration, if and when the final underlying application registers. While new to Canada, divisional applications have been permitted in many other jurisdictions for years.

This procedure can be used, for instance, to divide specific goods and services which are subject to an Examiner’s objection from those which are not, in order to allow a portion of an application that is not objected to, to proceed to advertisement and ultimately, registration. That way, an applicant can obtain a registration which covers goods or services that are not objected to, while the remaining goods or services under objection are dealt with via argument or through filing evidence of acquired distinctiveness.

The amendments to the Act which allow for divisional applications came into effect before CIPO could update its online systems to handle these changes, and those systems have still not been updated. The relevant Practice Notice has been revised to explain how applicants should file a divisional application in the current environment – i.e. until the online systems are updated. Pursuant to the changes, an applicant now has two options. It may:

  1. 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
  2. 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.

The Registrar will then send the applicant a notice confirming that the divisional application has been created. Presumably, this Practice Notice will be further updated once CIPO’s online system gains the functionality to allow for divisional applications directly through the online interface.

Temporary Appointment of Agent

The final amendment is to the Practice Notice entitled “Temporary Appointment of Trademark Agent or Associate Trademark Agent.” This Practice Notice provides guidance for circumstances in which a Trademark Agent is appointed for the purpose of submitting a single communication or request. In such instances, the appointment, communication or request, and revocation of Agent must all be communicated to the Registrar in one document.

CIPO has added comments to this Practice Notice, specific to the temporary appointment of a Trademark Agent for the purpose of responding to a notice under Section 44.1, discussed above, pursuant to which a registered owner must group its goods and/or services according to Nice. The added language specifies that a registered owner may make this temporary appointment of an Agent using the online services through the CIPO website by including the temporary appointment information in the “Closing Details” section of its electronic response.

The various changes discussed above show the extent to which CIPO continues to modify practice in reaction to the seismic shift in trademark laws, which occurred less than a year ago. CIPO’s refinement of its Practice Notices and Guidance Document show that it is making efforts to accommodate these changes. However, this should also give trademark owners pause when deciding whether or not to retain qualified professionals to prosecute and maintain their trademarks in Canada.

If you are confused about the various minutiae of Canada’s significant trademark changes, you are not alone. We deal in these minutiae every day – please feel free to give us a call.