January 18, 2017
Industrial design registrations under the Industrial Design Act (the “Act”) are similar to design patents in the US. They protect the features of a product that are visually appealing and not purely utilitarian. They can consist of a shape, configuration or composition of pattern or color, or combination of pattern and color in three-dimensional form, such as the design of a table or the shape of a computer monitor.
The Canadian Intellectual Property Office (CIPO) published six new practice notices on January 13, 2017 regarding the industrial design registration process under the Act. Each notice came into effect immediately and affects both pending and future design applications. According to CIPO, the changes will improve client service, reduce administration and modernize Canadian practices in order to align those practices with international standards. These changes may also impact registrable subject matter (see below).
June 8, 2016
The Canadian Intellectual Property Office (CIPO) has published a Fee-for-service proposal (the Proposal), seeking public input by July 5, 2016. The Canadian government significantly amended the Trade-marks Act (the Act) in 2014, in order for Canada to accede to the Singapore Treaty, the Nice Agreement and the Madrid Protocol. Those amendments have not yet come into force, however, pending the adoption of new Regulations on various matters, including fees. The Proposal is the first step in adopting new Regulations on the fees that will be applicable.
ILN Today Post
June 14, 2012
The Canadian Intellectual Property Office’s (CIPO’s) 2010-2011 Annual Report was tabled in the House of Commons on May 11, 2012. This article focuses on the statistics from the Report for the Canadian Patent Office section of CIPO.
Overall, CIPO received 35,318 new patent applications in the past year, 4,477 of which were filed by Canadian applicants and 1,278 of which were filed in French. The volume of new applications has declined somewhat in recent years from 40,796 applications in 2008-2009 and 37,375 in 2009-2010. The number of patents granted at 38,235 for 2010-2011 is higher than the 35,188 granted in 2008-2009 but slightly lower than the 39,108 granted in 2009-2010. More…
March 28, 2012
In a reversal of it’s long held position, the Canadian Intellectual Property Office (CIPO) has today announced that it is now accepting applications to register sound marks. This announcement apparently comes as a result of ongoing Federal Court of Canada proceedings regarding an application filed in 1992 by Metro-Goldwyn-Mayer Studios Inc. (MGM) to register as a trade-mark in Canada, the sound of a roaring lion that precedes most, if not all, of their film productions.
September 7, 2011
The Canadian Intellectual Property Office (CIPO) today announced the approval of over 500 new or changed wares (goods) and services descriptions in its online Wares and Services Manual. This is the Manual that the CIPO Examiners refer to when reviewing applications for registration of trade-marks under the Trade-marks Act (the Act). Under Section 30(a) of the Act, an applicant is required to describe its claimed wares and services in ordinary commercial terms.
While certainly not exhaustive of all of the descriptions that an Examiner will consider to be acceptable, if an applicant’s wares and services can fit within the approved descriptions in the Manual, the processing of the application is likely to be much smoother.
June 9, 2011
As an update to this story, CIPO has provided further guidance as to how it will handle outgoing mail during the postal strike.
CIPO will assess outgoing correspondence on a daily basis and will send essential date-sensitive correspondence via courier. Additionally, correspondence and other documents with respect to opposition proceedings will be sent either by courier or facsimile. It appears that trademark owners or their agents may also arrange for a pick-up service by sending a written request to CIPO.
June 3, 2011
The Canadian Union of Postal Workers has announced a rotating postal strike in Canada. If the Union and Canada Post do not reach an agreement, it is likely that the strike will escalate. A full strike will mean that mail will not be delivered in Canada, including outgoing correspondence from the Canadian Intellectual Property Office (“CIPO”).
While CIPO has a policy to ensure that correspondence may be delivered to CIPO and its designated establishments throughout Canada, it does not have a policy or plans to deal with outgoing correspondence to trademark applicants/owners and their agents. Consequently, if the postal stike carries on for an extended period there may be some adverse consequences for trademark applicants/owners if they or their agents are not taking alternate or additional steps to monitor applications/registrations for any correspondence issued by CIPO with respect to same during the strike.
May 6, 2011
In an update to this story, this morning CIPO announced its discovery that a number of the entries it added to the Wares and Services Manual as a result of Canada’s participation in the trademark identification harmonization project conducted by the Trilateral Partners do not comply with Canadian trademark requirements.
May 5, 2011
After a long wait, Canadian practitioners were delighted to learn this morning that CIPO has finally approved and activated more than 12,000 new entries in the Wares and Services Manual.
By way of background, in 2009 CIPO signed a memorandum of co-operation with the United States Patent and Trademarks Office, the Japan Patent Office and the Office for the Harmonization of the Internal Market (responsible for overseeing the CTM system). These entities – known as the Trilateral Partners – have worked in a loose association over the last few decades to promote and effect harmonization in their IP registration systems.
December 16, 2010
The Canadian Intellectual Property Office (CIPO) sent out a reminder today, advising that pursuant to the Olympic and Paralympic Marks Act (OPMA), marks and expressions listed on Schedules 2 and 3 of that Act will expire on December 31, 2010. As a result, commencing on January 1, 2011, CIPO will no longer raise an objection pursuant to Section 12(1)(i) of the Trade-marks Act on the basis that an applied for mark consists of or so nearly resembles as to be mistaken for a mark or expresssion found in either of those Schedules.