Facts

Question 1

T/F - To claim a priority filing date from a foreign application, the mark applied for in Canada must be identical to the mark in the foreign application.

Answer 1

False. S. 34 provides that marks ust be the same or substantially the same

Question 2

T/F. Where an application was filed in the name of a predecessor-in-title, and the applicant wishes to amend the application to show the name of the successor-in-title, will CIPO accept an explanation why the application was filed in error?

Answer 2

Flase. R31(a) provides that an application cannot be amended to change the applicant’s identity, except after if the Registrar has recognized the transfer of title

Question 3

T/F. CIPO will accept an application where the applicant’s name incorporates both a French and an English version of the applicant’s name.

Answer 3

True.

Question 4

A certification mark can be based on a s. 16(2) use and reg abroad claim.

Answer 4

True.

Question 5

4 requirements particular to a sound mark application

Answer 5

1) state that the application is for the registration of a sound mark;
2) contain a drawing that graphically represents the sound;
3) contain a description of the sound; and
4) contain an electronic recording of the sound.
Only paper application accepted.
PN - TM Consisting of a Sound

Question 6

When an application claims use and reg abroad s. 16(2), what are the 3 pieces of information required to obtain a filing date for the Canadian application?

Answer 6

1) foreign registration date and no.;
2) applicant’s address;
3) statement that applicant, by itself and through a licensee, or by itself or through a licensee, intends to use the mark in Canada.

Question 7

Is “banking services” in compliance with the Act?

Answer 7

No. Need to be redefined or excluded if the applicant is not authorized to provide such services pursuant to the Bank Act or other act of Parliament. See s. 30(i) and Bank Act s. 983(2.1)

Question 8

Options to respond to a confusion objection per s. 12(1)(d)?

Answer 8

1) file argument;
2) s. 45 the cited registration based on non-use;
3) seek consent to registration from the cited owner; or
4) seek to obtain assignment of the cited registration to the applicant, if there is evidence of non-use of the cited registration

Question 9

Can an applicant request for more than one extension to file response to an OA?

Answer 9

Yes, further extension available if applicant is able to demonstrate exceptional circumstances why it is not yet possible to file a reponese within the timeline.
PN - Extension of time in examination

Question 10

T/F. CIPO will accept US registration on the USPTO Supplemental Register as a basis for a claim pursuant to s. 16(2).

Answer 10

True.

PN - on s. 16(2) claim, Nov 3, 1993

Question 11

If a mark shown on a certified copy of a registration submitted to support s. 16(2) claim is substantially the same as the mark applied for in CA, will the certified copy support the claim?

Answer 11

No. Must be identical. However, small variations allowed if it is tosupport a s. 14 claim.
Examination Manual II7.3.2

Question 12

T/F. CIPO will not grant an extension of time to respond to an OA to amend an application to include NICE classes.

Answer 12

True.

Question 13

T/F. If a Canadian application based on s. 16(2) if filed in the name of an applicant in both Canada and the foreign country, and the certified copy shows that the foreign registration stands in the name of >1 owner, s. 16(2) will no longer be acceptable.

Answer 13

True.

Ex. M II7.3.2

Question 14

As per s. 37, Registrar will only refuse an application on what basis?

Answer 14

1) does not conform with s. 30;
2) not registrable; and
3) applicant is not entitled …
All other reasons (e.g. incompliance with NICE classess) do not prevent application from being advertised

Question 15

T/F. A NFLD registration can be transferred.

Answer 15

True

Question 16

T/F. There is a fee to record the transfer of a NFLD registration

Answer 16

True. $1 required under the law of NFLD.

Ex. M. III 5.4

Question 17

CIPO may issue correspondence identifying 3 possible definiciens in rqeuests to recognize the transfer of an application for registration.

Answer 17

1) prescribed fee $100 relating to a request not paid;
2) evidence furnished of the transfer is not satisfactory;
3) address in Canada if transferee located in Canada, or a foreign transferee, the address abroad and the name and address of a representative for services in Canada not provided.
PN - No time limit to respond to correspondence from the Trademark Office with respect to transfer (Aug 13, 2009)

Question 18

T/F. There is a fee for recording a change of name of the applicant.

Answer 18

False

Question 19

T/F. A change in the name of a Cdn applicant is a change in the identity of that applicant.

Answer 19

False. R31(!a) does not allow change in owner’s identity.

Question 20

Is a change to translation of a mark a permitted change to the Register?

Answer 20

No. Details of the translation were published/advertised, the Registrar cannot amend the translation.
S. 41(1) - allowed changes to register;
s. 37(1) - when application to be refused/advertised;
R29(a) - translation required;
R16(J) - advertisement sets out details of translation

Question 21

Which section sets out the deadline to file a Statement of Opposition?

Answer 21

S. 38(1) - 2m from advertisement

Question 22

What is the prescribed fee for filing a SoO?

Answer 22

$750

Question 23

What are the grounds of opposition?

Answer 23

Set out in s. 38(2):

1) non-formity with s. 30
2) non-registrable under s. 12;
3) non-distinctive s. 2
4) applicant is not entitled due to confusion s. 16

Question 24

What are the stages of s. 45 proceeding?

Answer 24

1) request for s. 45 notice with $400 fee
2) notice sent by Registrar to RO;
3) evidence filed by RO (RO may request extension to file evidence);
4) written representations by requesting party;
5) written representations by RO;
6) within 1m following the final deadline for the submission of the RO’s written representation, each party may request for hearing;
7) hearing if requested;
8) decision; and
9) appeal.

Question 25

Can a license relationship be implied?

Answer 25

Yes

Question 26

T/F. A foreign applicant may apply for a certification mark in CA based on reg and use abroad even though the foreign applicant may have used the mark abroad for purposes other than as a certification mark.

Answer 26

True.

Question 27

T/F. A mark registered and used as a certification mark abroad can be the basis for registration for an ordinary trademark in Canada.

Answer 27

True.

Question 28

T/F. A medallion, intended to be worn as a badge, cannot be the subject of a certification mark.

Answer 28

True

Question 29

Can an application for certification mark be based on proposed use?

Answer 29

No. B/c of ss. 2, 23 and 30(f) - refer to a certification mark as being in use

Question 30

Does the Registrar allow an extension of deadline to file written representation in a s. 45 proceeding?

Answer 30

No, b/c of the summary nature of s. 45, no extension of administrative deadline allowed (s. 47)

Question 31

What does s. 9(1)(k) prohibit?

Answer 31

Registration of a mark that suggests a connection with a living individual.
To respond to such a objection, argue that the cited individual has no significant public reputation

Question 32

In you want to request a hearing for a s. 45 proceeding, what is the deadline to file a written notice?

Answer 32

Must be filed within 1 month following the final deadline for the submission of RO’s written representation.
The notice must indicate:
1) whether you will make representation in person or by phone;
2) if representation will be in E or F; and
3) whether simultaneous translation will be required.

Question 33

What is the deadline to file evidence in chief in an opposition proceeding?

Answer 33

4m from counterstatement.

R41(1)(a)

Question 34

What factors will CIPO consider in deciding whether to grant leave for the opponent to amend its SoO?

Answer 34

1) stage the opposition proceeding has reached;
2) why change was not made earlier;
3) importance of the change; and
4) prejudice to teach party

Question 35

What is the deviation test?

Answer 35

Whether mark as used is sufficiently close to the mark as registered, so that by comparing the two and determine whether the differences are so unimportant that an unaware purchaser would be likely to infer, that despite the difference, the associated goods/services have the same origin

Question 36

In a s. 45 proceeding, will evidence from date after the relevant date make the Registrar to draw a negative inference?

Answer 36

No, if the affidavit asserts that use of the mark on the evidence is representative of the nature of the use of the mark on similar evidence during the relevant period.

Question 37

What does s. 9(1)(j) prohibit?

Answer 37

Reg of marks that are scandalous, obscene or immoral

Question 38

What other types of marks are referred in s. 9?

Answer 38

Device, hallmark, portrait, signature, seal

Question 39

Can you prevent the importation of goods bearing marks that are confusing with a registered mark in CA?

Answer 39

Yes - s. 51.03(1) provides that no good shall be imported if the goods or their packaging bear a mark that cannot be distinguished from a registered mark

Question 40

How long can customs rightfully detain goods with confusing marks?

Answer 40

5 days for perishable goods; 10 days for other goods

s. 51.06(2)

Question 41

Can you request the customs extend the deadline set for detention of the imported goods?

Answer 41

Not for perishable goods

Question 42

Can you submit an affidavit pursuant to s. 45 proceeding electronically?

Answer 42

No - R3(9)(C)

Question 43

Does use of an Official Mark by another person accrue to the benefit of the Public Authority?

Answer 43

No - s.9(2) does not deem as such

Question 44

What are the alternatives to X-ex in person in CA?

Answer 44

1) X-ex by video conference;
2) X-ex by written interrogatories and
3) travel to country where the affiant for X-ex at the representing party’s expense

Question 45

What happens if the affiant refuses to participate in X-ex and the other side does not agree to alternatives?

Answer 45

The affiant’s affidavit will be excluded from evidence in the proceeding
R44(5)

Question 46

What types of proceedings require the initiating party to be a person interested?

Answer 46

Expungement proceeding before the FC (s. 57)
Filing of a statement of objection after the publication of a statement referred to in s. 11.12(2) or (2.1) [geographical indication]

Question 47

What information does an applicant of a certification mark provide?

Answer 47

1) applicant’s full name and address;
2) applicant’s legal status;
3) information on whether there has been use by a licensee in CA; if not, whether there is use and registration/application in a foreign country;
4) registration details in home jurisdiction;
5) does the applicant has a licensing agreement with the licensee;
6) specific standards for the G/S in question;
7) date of first use; and
8) list of G/S.

Question 48

When will a notice of default be issued?

Answer 48

1) if applicant failed to file a response during examination; and
2) if applicant failed to pay registration fee for which a Declaration of Use was not required.

Question 49

Will CIPO accept an application in the names of two entities jointly?

Answer 49

No, unless they are carrying on business in partnership or as a joint venture.

Question 50

What is the purpose and nature of a s. 45 proceeding?

Answer 50

1) s. 45 is an administrative proceeding to permit the removal from the Register marks which have fallen into disuse in Canada;
2) response to the s. 45 notice must be filed within 3 m of the notice. The deadline may be extended by 3m upon payment of the prescribed fees;
3) in the response, the registrant must file evidence in the form of an affidavit or statutory declaration establishing that the mark has been in use in Canada by the registrant (or accruing to it) in association with the G/S listed at any time during the 3 yr period immediately proceeding the issuance of the notice;
4) the evidence should describe registrant’s ordinary course of trade and demonstrate how the mark has been used (by filing labels depicting the mark, copies of signage, advertising, etc.);
5) in the alternative, evidence showing facts justifying the absence of use and a concrete intention to resume use in the future should be provided.

Question 51

What is the material date for assessing ground of opposition based on unregistrability s. 12

Answer 51

date of the Board’s decision

Question 52

What is the material date for assessing ground of opposition based on non-entitlement s. 16

Answer 52

date of entitlement (e.g. if apn filed based on proposed use, date of filing of the application; if filed based on use, then date of claimed date of first use, etc.)

Question 53

What is the material date for assessing ground of opposition based on non-distinctiveness s. 2

Answer 53

date of filing the SoO. Burden on applicant

Question 54

What is the material date for assessing ground of opposition based on non-compliance with s. 30

Answer 54

filing date of the opposed application. Burden on applicant

Question 55

Can a registered mark be expunged for reasons other than those stated in s. 18?

Answer 55

Yes, if a false declaration of use was filed (Unitel v. Bell)

Question 56

What are your options if an Examiner cites a NFLD registration during examination?

Answer 56

A NFLD registration cannot be cancelled for non-use under s. 45. One option is to restrict the application to the provinces of Canada other than NFLD. Another option is to contact the owner of the NFLD mark to seek an assignment of the registration.

Question 57

What are s. 9 marks?

Answer 57

1) marks not examined for confusion with prior marks;
2) an official mark does not fall within the
definition of a trademark in S. 2;
2) when the statutory criteria under S. 9 are met, the Registrar has no discretion to refuse an application for an official mark if it is made by a public authority;
3) they do not need to be distinctive from the public authority;
4) they do not have to be related to specific G/S;
5) they are perpetual and do not have to be renewed;
6) they cannot be subject to opposition or s. 45 proceedings;
7) the prohibition against adopting an official mark is prospective in nature and does not operate retroactively (i.e. if one adopted a mark prior to public notice being given of its adoption, it may continue to use the mark in respect of the same G/S).

Question 58

What are the fundamental requirements for acceptance of a SoO?

Answer 58

1) has the name and address of the opponent;
2) has at least one valid ground of opposition; and
3) submission of prescribed fee.

Question 59

When will an application be considered “abandoned”?

Answer 59

1) failure to file a response to OA during examination;
2) failure to file a counterstatement in an opposition; and
3) failing to respond to the Notice of Allowance and to file the Declaration of Use and/or registration fee.

Question 60

What is an “incontestable registration”? Can it be expunged?

Answer 60

A registration which has been on the Register for >5 yrs. It may be expunged on

(1) grounds of non-entitlement. The person having prior rights establish that the RO was aware of those prior rights at the time of adoption of the mark;
(2) other elements listed in s. 18, i.e. unregistrable at the time of registration; non-distinctive at the date at which the distinctiveness is challenged; or that the registered mark has been abandoned;
3) on the basis of non-use as per s. 45.

Question 61

What are some restrictions on claiming Convention Priority?

Answer 61

1) can only claim from the first filed application;
2) the application must be filed in or for any country of the Union and in which the applicant was at the date of the application (a) a citizen or national of or domiciled in that country; or (b) had a real and effective industrial or commercial establishment.

Question 62

Can a plant variety (denomination under the Plant Breeder’s Act) be used as a trademark?

Answer 62

No, registration is in contravention of s. 10.1.

Question 63

What does “depreciation of goodwill” mean?

Answer 63

1) the taking of a product’s goodwill to sell a competitive product (e.g. Clairol case);
2) dilution by tarnishment (e.g. Perrier case);
3) dilution by blurring (e.g. in the Veuve Clicquot case)
* ** no requirement for “confusion” within the meaning of s. 7, 19 or 20.

Question 64

How are the “character and quality” terms for certification mark license differ from the terms found in a regular trademark license agreement?

Answer 64

The terms different significantly - they must fall under the four general standards set out in C.M.’s definition in s. 2. They do not describe certain material features of the G/S (e.g. composition of the G, or process used to mf them, etc.)

Question 65

Can standards contained in a registered certification mark be changed after registration?

Answer 65

Yes, s. 41(d).

Question 66

Can a third party register a trademark that incorporates a registered certification mark?

Answer 66

Yes, s. 24 - so long as the third party obtains C.M.’s owner’s consent, and the mark exhibits an appropriate difference.

Question 67

Can a trade union or commercial association apply for a trademark registration?

Answer 67

Yes, but they may be required to furnish evidence that its existence is not contrary to the laws of the country in which its headquarters are situated (s. 33).

Question 68

Can you oppose an application on the basis of non-entitlement relying upon use of a confusing mark by an independent third party?

Answer 68

No. s. 17 provides that no application shall be refused on the ground of use or making known of a confusing mark or name by another person, except at
the instance of that person or his successor-in-title.

Question 69

Can you amend the statement of G/S once a mark is registered?

Answer 69

Yes. S. 41(1)(c) –> cost saving if expanding the G/S vs. filing a new application with additional G/S

Question 70

How to give notice to the public of licensed use?

Answer 70

1) include a bilingual marking legend on the packaging (e.g. X is a registered tm of ABC, used under lice by XYZ);
2) record license against the trademark registration in CIPO

Question 71

How to prevent the importation and sale of grey goods into Canada?

Answer 71

Prevention is possible if there is a material difference between the composition and/or quality of the foreign goods and those intended for Canadian consumption (Smith v. Nephew). However, if the products appear to be identical, a trademark claim would likely be unsuccessful.
From a copyright perspective, (Kraft v. Euro Excellence), an exclusive licensee cannot assert a claim of secondary infringement of a work reproduced on product packaging, to prevent the importation of grey goods into Canad featuring the same copyrighted work, if those goods were manufactured by the copyright owner. However, this may not apply if the copyright owner is to claim for copyright infringement and prevent grey goods importation. Even then, the court will look at whether the copyright work is “merely incidental” to the product being sold, and whether there is a “legitimate economic interest” in the copyright apart from the product itself.

Question 72

Can the Registrar withdraw a NoA?

Answer 72

Yes

Question 73

What are the implications of failing to file a written argument in an opposition?

Answer 73

Such failure does not disentitle a party from requesting a hearing or simply permitting the matter to proceed to decision. However, filing a written statement may help the party to provide a stronger written argument which summarizes the evidence, points out the strength of your case and the weaknesses in the other side’s case.

Question 74

If a client wants to record the assignment of only some of the associated marks, what can you do?

Answer 74

1) seek disassociation of the marks by filing written arguments to persuade the Registrar that the marks to be dissociated are not confusing with the rest of the marks, and that they should be able to co-exist in the names of different owners without confusion;
2) record the assignment once disassociated
If dissociation is not successful, than the parties may need to enter into license agreement and allow the marks to remain in the name of one owner.

Question 75

What clauses should a co-existence agreement include?

Answer 75

1) presentation and display of the mark - specify the form of the mark to be used, and whether in association with other element;
2) list of associated G/S;
3) channels of trade - if applicable, e.g. G/S are only available through one party or the Internet;
4) limitations on geographical areas of use - to limit the likelihood of confusion;
5) if the mark can be modified in the future and how;
6) if change of ownership/assignability is possible;
7) applicant agrees not to attack the validity, the use and ownership of the opponent’s mark;
8) cooperation regarding 3rd party applications/infringement; and
9) confidentiality of the co-existence agreement.

Question 76

What circumstances would support a claim by an applicant that it is a “person interested”?

Answer 76

1) the applicant has received a C&D letter;
2) the applicant has been sued by the other party;
3) the applicant’s mark has received a citation of the other party’s mark; and
4) the applicant’s application has been opposed by the other party.

Question 77

How can a licensor monitor the use of its mark?

Answer 77

The license agreement should cover:
1) licensor has the right to enter and inspect licensee’s premises;
2) licensor has the right to receive samples of marketing and advertising material on a periodic basis
to control the way the trademark is being used; and
3) licensor has the right to request modifications when the use is not in accordance with its standards.

Question 78

What are “associated marks”?

Answer 78

Marks that the Registrar found to be confusing but nonetheless authorized for registration because they are owned by the same person.

Question 79

What are the fundamental principles for determining the acceptability of G/S as per s. 30(1)?

Answer 79

Are the G/S sufficiently specific so

1) that it is possible to assess whether s. 12(1)(b) applies?
2) that it is possible to assess confusion?
3) the applicant will not have an unreasonably wide ambit of protection [e.g.: approving wares described as computer software, without further specification, would give the applicant an unreasonably wide ambit of protection]?

Question 80

What happens if an affidavit in a s. 45 proceeding is susceptible of >1 interpretation?

Answer 80

This is prohibited. If this is the case, the interpretation adverse to the interest of the party in whose favour the affidavit was made will be adopted.

Question 81

If a SoO is based on confusion with a pending application (s. 16(3)(b)), and the application later proceeded to registration, can you amend the SoO?

Answer 81

Yes, according to R40. Opponent must request leave from the Registrar to rely upon confusion with the opponent’s registered mark. However, unless s. 12(1)(d) is raised, the Registrar is precluded from considering the new ground.

Question 82

Can you file new evidence in reply in an opposition?

Answer 82

No, Rule 43 evidence is confined to matter in reply to the applicant’s R42 evidence. However, can file new evidence as additional evidence under R44(1) with leave from the Registrar.

Question 83

T/F. The Registrar may order an affiant to answer undertakings given during X-ex.

Answer 83

False. The Registrar does not make ruling during the course of an opposition as to whether certain questions asked in X-ex should be answered.
(See PN)

Question 84

Can an opponent obtain an 9-m extension of time, amounting to a cooling-off period, to file its R43 evidence?

Answer 84

No. The cooling-off period provided for under the PN does not apply to evidence under R43.

Question 85

T/F. The Registrar may accept >1 extension of time amounting to cooling-off so long as the total period is within the maximum benchmark of 9m.

Answer 85

False. The Registrar will only consider 1 request for an extension of time up to the maximum benchmark.

Question 86

What is the name of the international agreement that provides for claiming priority?

Answer 86

Paris Convention for the Protection of Industrial Property.

Question 87

How is the Precious Metals Marking Act associated with trademark registration

Answer 87

Where a quality mark is applied to a precious metal article it must also bear a trademark that has either been applied for or registered with the Registrar.

Question 88

In an opposition proceeding, if the applicant did not file R42 evidence but provided written argument, what can the opponent argue?

Answer 88

The opponent can argue that the applicant’s argument and evidence contained therein should be disregarded because it was not filed as part of an affiadvit or statutory declaration

Question 89

In an opposition proceeding, why an applicant should not request an interlocutory ruling at the time it files the counter statement?

Answer 89

As soon as the counter statement is filed, the Opponent may file evidence. If the Opponent files evidence, even partial, before the Board’s ruling, the Board will refuse the request for an interlocutory ruling. Once evidence has been filed issues concerning striking all or any portion of the opponent’s pleadings will only be considered at the decision stage.

Question 90

In an opposition proceeding, your (the applicant) deadline to file and serve R42 evidence expires tomorrow, but you are still waiting for information for your client. As you have already obtained an extension of time corresponding to the benchmark of three months, a request for an extension of time is unlikely to be granted. What can you do to avoid the consequences of s. 38(7.1) when requesting the extension of time?

Answer 90

Request in the alternative that the letter be considered as the Applicant’s statement that it does not wish to submit evidence pursuant to R42.

Question 91

What are the circumstances identified in the PN re Opposition Proceedings as exceptional circumstances that may justify the grant of a further extension of time to comply with the cross-examination order.

Answer 91

1) Waiting for the transcript of a recent X-ex;
2) Waiting for answers to undertakings given during a recent X-ex;
3) The need to schedule multiple X-ex;
4) The terms of the order apply to a recently substituted affidavit or statutory declaration.

Question 92

Assuming that settlement discussions are ongoing, identify the 3 requirements that must be satisfied for an opponent to obtain up to 9m as an extension of time, amounting to a cooling-off period, to file its R41 evidence.

Answer 92

1) Payment of the prescribed fee of $125;
2) Consent of the applicant; and
3) The opponent has not already been granted an extension of time amounting to a cooling-off.

Question 93

Is sale/use by a distributor sale/use by the trademark owner?

Answer 93

Yes, a sale by a distributor is the same as a sale by owner and does not require any license.

Question 94

S. 9 relates to two categories of prohibited marks, absolute and relative prohibitions. Indicate two provisions as an example for each

Answer 94

Absolute: any of 9(1)(a),(b),(c),(d),(f),(g),(g.1),(h),(h.1),(i.2),(j),(k),(l),(m); and
Relative: any of 9(1)(e),(i),(i.1),(i.3),(n)(i),(ii),(iii).

Question 95

Can a distinguishing guise be expunged?

Answer 95

Yes, s. 13(3) provides for the expungement by the FC of a registration that has become likely unreasonably to limit the development of any art or industry.

Question 96

In an opposition proceeding, what is the potential consequence to an applicant for failing to properly serve its evidence prior to the deadline?

Answer 96

The application shall be deemed to have been abandoned pursuant to s. 38(7.2)

Question 97

In an opposition, what is one way to attack the admissibility of the other side’s affidavit?

Answer 97

Can argue that the affiant is not an objective witness giving unbiased evidence about a contentious issue.

Question 98

If the Opponent did not evidence its registration for the trademark, can the Registrar still have regard to it?

Answer 98

Yes, the Registrar does have the discretion to check the register to confirm the existence of the registration identified by the opponent in the SoO.

Question 99

what are the two most important general duties to consider to determine if you have a conflict of interest?

Answer 99

(1) the duty of confidentiality and (2) the duty of loyalty.

Question 100

At what specific point during the opposition will the Opposition Board no longer consider requests for an interlocutory ruling to strike the SoO?

Answer 100

Once evidence has been filed.

Question 101

What is the only situation where the Trademarks Office currently requires a disclaimer during prosecution?

Answer 101

If the mark has a depiction of the 11 pointed maple leaf.

Question 102

In the appeal of a s. 45 decision, if the registrant files new evidence, can the requesting party X-ex on that new evidence?

Answer 102

Yes. But cannot x-ex on evidence filed before the Registrar.

Question 103

When is a drawing required in a trademark application?

Answer 103

If the mark is in a form other than plain word(s) (s. 30(h) and R27(1)) and if colour is claimed as a feature of the mark (R28).

Question 104

When a mark consists of colour applied to a 3D object, is a colour claim necessary?

Answer 104

No. When a trademark consists of colour, a description of how the colour is applied to the visible surface of the wares is required.

Question 105

Is a geographical indication the only way that the origin of a wine or spirit can be protected?

Answer 105

No, certification marks can also be used to protect a geographical indication of origin.

Question 106

Can you convert an application for a regular trademark to an application fora certification mark?

Answer 106

Yes if (1) the mark has not been advertised yet; and (2) the application is based on use (by a licensee).

Question 107

Is “postage stamp” an acceptable description of goods?

Answer 107

Acceptable under s. 30(a) but not acceptable subject to the Canada Post Corporations Act (s. 30(i)).

Question 108

Is “banking services” an acceptable description of goods?

Answer 108

Acceptable under s. 30(a) but not acceptable subject to the Bank Act (s. 30(i)).

Question 109

Is there a deadline to respond to official letter regarding deficiencies in assignment?

Answer 109

No, the Office does not set a time limit to respond to official letters

Question 110

What are the parties’ burdens in an opposition proceeding?

Answer 110

The opponent bears an initial evidential onus regarding each of the alleged ground of opposition; the applicant bears the legal burden (on a balance of probabilities standard) of showing that its mark is registrable.

Question 111

What are the most relevant elements that a plaintiff needs to establish to succeed in an infringement action under S. 19

Answer 111

1) the existence of a registration;
2) that the defendant has used a mark that is identical to the registered mark; and
3) that such use has been in association with one or more of the G/S covered by the registration.

Question 112

What evidence must be filed to support a claim under s. 12(2)?

Answer 112

An affidavit showing extensive use of the mark across Canada together with advertising in relation to the mark prior to the date of filing the application.

Question 113

What is the extension of time for filing a Declaration of Use?

Answer 113

Usually 6 month; 1 year extension may be granted upon request when the applicant is awaiting government approval for a pharmaceutical product.
Prescribed fee must accompany each request.

Question 114

Is “promotional services” s. 30(a) compliant?

Answer 114

No.

Question 115

What should be shown in a drawing of a 2D mark applied to 3D object?

Answer 115

The mark should not be shown as applied to a 3D object unless if it provides a better understanding of the mark, then the drawing should:

1) show the 3D object in dotted line;
2) the application must contain a description of the mark that makes clear that the application covers the 2D mark only; and
3) the description must specifically state that the 3D object shown in dotted outline does not form part of the mark.

*** should the description/drawing indicate that the mark has, in whole or in part, a shape that is defined by the shape of a 3D object, the mark will be considered as a 3D mark and must be identified as such in the description.

Question 116

Is “pharmaceutical preparations” s. 30(a) compliant?

Answer 116

No. It must be specified in greater details by:

(a) naming the disease (e.g. treatment of cancer);
(b) specifying the disease group or type of disorder or condition to be treated (e.g. treatment of infectious diseases); or
(c) by indicating the specific type of medication (e.g. antibiotic creams).

Question 117

What are the extensions of time allowed as per the PN on opposition?

Answer 117

1) SoO - initial 3m + 9m cooling off;
2) counterstatement - initial 2m + 9m cooling off;
3) R41 evi - 3m with consent + 9m cooling off (if not granted under 1/2);
4) R42 evi - 3m with consent + 9m cooling off;
5) X-ex - up to 4m with consent;
6) R43 evi - 4m with consent;
7) written argument - 4m with consent; and
8) hearing - n/a

Further extension may be granted upon request under “exceptional circumstances”:

• co-pending opposition proceeding;
• recent change in instructing principal or trademark agent;
• assignment;
• revised application for a mark that is the subject of the opposition; or
• finalizing settlement - one extension up to 3m with consent

Question 118

Can you request for leave to file additional evidence any time during the opposition proceeding?

Answer 118

No. Once written arguments have been requested as per R46(1), no request for leave to file additional evidence will be considered unless it is specifically agreed that the affiant or declarant will be made available for X-ex at the request of the other party.

Question 119

What is the effect of X-ex on the prescribed deadline in an opposition proceeding?

Answer 119

No effect. If an applicant’s request for a X-ex order is made within 2m from the completion of R41 evidence, the applicant may requrest an extension of time under s. 47 to file R42 evidence. Upon request, the Registrar will generally issue a X-ex order granting an extension of 4m from the completion of X-ex to file and service R42 evi.

If the applicant is in default of completing the X-ex within the deadline fixed, the 4m extension will be automatically reduced to 2m

Question 120

How are the costs of a X-ex allocated in an opposition proceeding?

Answer 120

If the affiant is in Canada, the party requesting the X-ex will pay all expenses involved in having its agent present at the place of business of the deponent being X-exed.
If the affiant is outside of CA and the parties are unable to agree on having the X-ex in the deponent’s country, the deponent will be available for X-ex in CA and the party whose deponent is being X-exed will bear the cost of all expenses.

Question 121

When does the clock start for the purse of s. 45 if a registration has been amended to extend the state of G/S under s. 41?

Answer 121

The 3-yr period for such G/S applies from the date of the registration of the amendment.

Question 122

Can the RO request for a retroactive ex of t pursuant to s. 47(2) for filing additional evi any time in a s. 45 proceeding?

Answer 122

No, generally not granted once the requesting party has filed its written representations.
The request must include (a) fee; and (b) sufficient facts showing that failure to file evidence within the time limit was not reasonably avoidable.

Question 123

What are examples that cold amount to an exceptional circumstances that would justify a ex. of t. beyond 6m in responding to an OA?

Answer 123

1) recent change in trademark agent;
2) assignment;
3) circumstances beyond the applicant’s control;
4) certified copies - foreign application has yet to proceed to registration;
5) citation pending application - will be abandoned within the next 2m or is the subject of an opposition initiated by the applicant;
6) citation registered mark - is the subject of a s. 45 initiated by the applicant; or
7) official mark - trying to get consent from the holder.

Question 124

T/F. When making a color claim, the applicant only needs to provide a description of the color.

Answer 124

F. Must also make reference to the colour system (e.g. PANTONE 32) *PANTONE is a registered trademark

Question 125

What are the fundamental requirements for acceptance of a SoO by the Registrar?

Answer 125

1) the grounds of opposition must be set out in sufficient detail so the applicant can respond to them (s. 38(3)(a));
2) the address of the opponent’s principal office or place of business;
3) at least one substantial issue for decision (s. 38(4));
4) filing fee.

Question 126

What are the two factors that the Office considers to abandon an allowed apn based on proposed use?

Answer 126

Declaration of Use is not

1) filed 6m after NOA;
2) received for 3 yrs after the date of filing of the application in CA.

Question 127

T/F. Non-Cdn entities can own and request publications of a mark under s. 9

Answer 127

True.

Question 128

If one claims colour as a feature of the trademark, will the Examiner require the applicant to submit a drawing lined for the colour?

Answer 128

Not if the apn includes a clear description of the colour claim.

Question 129

T/F. In an infringement action, variations as to the appearance of the marks as actually used are relevant in determining whether the defendant’s trademark is confusing with the plaintiff’s registered mark.

Answer 129

False.

Question 130

T/F. A losing party in an opposition, which decides not to appeal from the registar’s decision, will be restricted in its right to institute proceeding under s. 57 calling into question the Registrar’s decision

Answer 130

True

Question 131

T/F. To succeed in an action based on s. 22, the primary element to be shown is that the mark used by the defendant creates confusion with the plaintiff’s mark

Answer 131

False

Question 132

T/F. Any statement or material required to be served on a party in an opposition may be served in any manner with the consent of the other party

Answer 132

True