CIPO Consultation on Trade-mark Foreign Use and Registration Claims

The Canadian Intellectual Property Office (CIPO) is consulting on a proposed trade-marks Practice Notice concerning foreign registration and use claims in Canadian trade-mark applications. Such claims are also called section 16(2) claims, after the governing provision of the Canadian Trade-marks Act. The deadline for comments is November 15, 2009.  Instructions on where comments can be sent are provided here.

Under the proposed Practice Notice:

  1. CIPO considers section 16(2) claims complete when they specify the particulars of the application or registration of the trade-mark in or for the applicant’s country of origin AND the name of a country in which the trade-mark has been used as of the Canadian application’s filing date.
  2. If the application contains an incomplete section 16(2) claim and another complete claim forming a registration basis under the Trade-marks Act (e.g. a proposed use or Canadian use claim), and the application is otherwise ready for advertisement, CIPO will delete the section 16(2) claim and advertise the application without issuing an Office Action. An Approval Notice, which advises the applicant that the application has been approved for advertisement, will issue.
  3. If a Canadian trade-mark application does not contain a section 16(2) claim when filed, or contains an incomplete section 16(2) claim, the applicant may add or perfect a section 16(2) claim before the Registrar of Trade-marks approves the application for advertisement.

The proposed practice change is significant, given the common delays between registration and use in many countries. If the Practice Notice goes into effect unchanged, applicants will have to race to perfect their section 16(2) claims as soon as possible to avoid losing a basis for registration, assuming that their applications contain another use claim and is otherwise ready for advertisement. This is because there is no set timeline for processing a Canadian trade-mark application, which may very well make the proposed Practice Notice controversial.

Another reason for controversy is that the basis for registration under Trade-marks Act section 16(2) is registration and use, not application and use, in the applicant’s home country. Since the proposed Practice Notice states that a section 16(2) claim is complete if it claims application and use in the applicant’s home country, the Practice Notice does not accurately interpret section 16(2).

The Practice Notice is silent on whether CIPO will no longer require a copy or certified copy of foreign trade-mark registration certificates to substantiate section 16(2) claims.  Also, while CIPO was previously considering eliminating Approval Notices, it appears from the Practice Notice that CIPO still intends to issue such Notices. Clarification is needed to ensure that is indeed the case.

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