Canadian Trademark Examination Delays – A Closer Look

Trademark owners and trademark lawyers around the world have noticed that trademark examination in Canada seems to have slowed down over the past few years, and is now much slower than nearly all other countries.

The Canadian Intellectual Property Office is currently examining applications filed in November 2018, which means that the current time to first examination is 30-31 months.  The Office publishes regular statistics, which can be found here, which lists the inventory, which is the number of applications that have been filed, but not examined.

When these number are plotted on a graph going back to July 2015, we can see that the inventory has increased sixfold in under six years.  The inventory number, which was for a number of years steadily between 25,000 and 30,000 applications waiting to be examined, is now over 160,000.  The inventory number has increased every single month since February 2017.

International trademark applications filed in Canada through the Madrid system are being examined before the 18 month mark, and CIPO has recently introduced a new practice notice for allowing the examination of trademark applications to be expedited under certain specific circumstances.  For the majority of applicants who do not meet these narrow criteria, we anticipate that, in the absence of extraordinary measures being introduced, the time until first examination will continue to increase, and will likely hit the three year mark sometime in 2022.  It is hoped that extraordinary measures, which do not compromise the quality of examination, are introduced before that prediction comes to pass.

Expedited Trademark Examinations in Canada

Applicants filing trademarks in Canada have become increasingly frustrated with long wait times over the period from filing a trademark application through to examination.  The Canadian Intellectual Property Office is currently examining trademark applications that were filed in November 2018, meaning that the timeline from filing to examination is now standing at 30 months.  Given the extremely high volume of trademark applications that were filed in the first half of 2019, ahead of the coming-into-force of Canada’s new trademark law on June 17, 2019, it is very likely that this long wait time will continue to increase for the foreseeable future. 

On May 3, 2021, the Canadian Intellectual Property Office introduced a new Practice Notice allowing for expedited examination of trademark applications falling under certain noted exceptions.  This is a notable change in practice, as expedited examinations have not been possible in Canada for many years.  There are four enumerated circumstances where expedited examinations will be considered:

1. A court action is expected or underway in Canada with respect to the applicant's trademark in association with the goods or services listed in the application;

2. The applicant is in the process of combating counterfeit products at the Canadian border with respect to the applicant's trademark in association with the goods or services listed in the application;

3. The applicant requires registration of its trademark in order to protect its intellectual property rights from being severely disadvantaged on online marketplaces; or

4. The applicant requires registration of its trademark in order to preserve its claim to priority within a defined deadline and following a request by a foreign intellectual property office. Note that in such cases the request will need to be attached to the affidavit or statutory declaration.

The request must be made by way of a sworn affidavit or statutory declaration outlining the circumstances of the request and how the application meets one or more the criteria set out in the Practice Notice.

Since this practice was just introduced, it is not yet clear how quickly these requests for expedited examination will be moved through the system, or how liberally the requests will be granted.  An important note for those considering making a request for expedited examination is that the Office warns that once the application has been expedited, any request for an extension of time or missed deadline could result in the expedited status being removed.

Lady Eh? How Lady Antebellum’s Trademark Troubles Could Have Played Out in Canada

The trademark dispute between blues singer Lady A and the band Lady Antebellum has garnered significant media attention, as well as attention from the trademark community.  Lady Antebellum, already on the receiving end of significant pushback for the band’s name being a reference to the pre-Civil War period of American history marked by the horrors of slavery, found themselves embroiled in an entirely new mess due to their new name being the same name used by a blues singer from Seattle.

One complicating factor in this dispute, where it appears that the blues singer Lady A is the senior trademark user, is that Lady Antebellum has had two trademark registrations on the Federal Register in the United States for a decade.  A United States trademark registration becomes incontestable when a Declaration is filed under Section 15 of the Lanham Act which can be filed five years after registration, certifying that there have been five years of continuous use of the trademark.  Incontestability provides certain presumptions to be raised with respect to the trademark registration and prevents certain grounds of cancellation, including that the mark is descriptive.

How would this trademark situation have played out differently if both parties had been located in Canada?  In Canada, trademark registrations become incontestable after five years, but there are two major differences from incontestable trademark registrations in the United States.  The first is that trademarks become incontestable five years from the date of registration automatically.  Unlike in the US, there is no requirement to file a Declaration or to have a certain period of continuous use of the trademark.  The second major difference is that the only impact of incontestability is that an incontestable trademark registration in Canada cannot be expunged or held invalid based on the ground of third party prior use of the trademark.  The only exception to this rule is if it can be proved that the registrant had actual prior knowledge of the prior use, which is extremely difficult to prove.  This means that, if the fact scenario in the United States had happened in Canada, Lady A’s prior common law trademark rights would likely not trump Lady Antebellum’s trademark registration.

An additional interesting wrinkle in this scenario is that Lady Antebellum actually did file a trademark application in Canada for LADY A in 2010, and that application issued to registration on February 12, 2016.  This registration will therefore become incontestable on February 12, 2021.  Amidst the negotiations that would surely be taking place, there would be a hard deadline for Lady A to file a lawsuit to cancel the registration. 

 Lady Antebellum is seeking a declaratory judgement that its trademark registrations are valid.  One reason that declaratory judgements are often sought is to try to stake a claim in the jurisdiction where the case will ultimately be heard.  In Canada, on the contrary, the Federal Court is the only court that has the jurisdiction to expunge a trademark registration, and so a declaratory judgement would likely not be as appealing to Lady Antebellum if this case was playing out in Canada.

There does not seem to be any evidence that Lady A ever made use of her trademark in Canada, and so this is a purely hypothetical scenario, but it is interesting to see the very different way that this case would likely play out in Canada.

Accounting Turf Wars - Trademark Oppositions in Canada

In our recent posts, we reported on the decisions which have now been released for the third and fourth quarters of 2019 by the Trademarks Opposition Board in Canada. A significant proportion of the trademark opposition decisions released in the second half of 2019 related to trademark oppositions filed by and opposed by professional associations of accountants.

The Chartered Professional Accountants of Ontario opposed one trademark application filed by Association of International Certified Professional Accountants, a District of Columbia corporation, four trademark applications filed by the Chartered Institute of Management Accountants, a United Kingdom organization, and eight trademark applications filed by American Institute of Certified Public Accountants, a United States entity. To add some additional flavour, the Certified Management Accountants of Ontario also opposed one of the trademark applications filed by the Chartered Institute of Management Accountants, and Ordre des Comptables Professionels Agrees du Quebec filed oppositions against six of the trademark applications which had been filed by American Institute of Certified Public Accountants.

All told, there was a group of 13 trademark applications against which a total of 20 oppositions were filed. The hearings for all of these trademark oppositions were scheduled by the Board over a period of six days.

Beginning with the oppositions by the Chartered Professional Accountants of Ontario against the applications filed by the American Institute of Certified Public Accountants, all of the grounds of opposition failed with respect to the trademark applications for the trademarks AICPA, AICPA & Design and THIS WAY TO CPA. However, with respect to the other five trademark applications, for the trademarks THE UNIFORM CPA EXAMINATION & Design, UNIFORM CPA EXAMINATION, GLOBAL CPA REPORT & Design, AMERICAN INSTITUTE of CPAs, AMERICAN INSTITUTE OF CERTIFIED PUBLIC ACCOUNTANTS, these oppositions were successful with respect to the ground alleging that the trademark was clearly descriptive or deceptively misdescriptive, pursuant to the provisions of Section 12(1)(b) of the Trademarks Act. Here, the Board held that the acronym CPA stood for “certified public accountant”, and that a Canadian candidate prepared to write the necessary examination would understand this. If on the other hand, the candidate thought that the mark referred to the dictionary definition of “chartered public accountant”, then the mark would be deceptively misdescriptive of the services, and still not registrable.

With respect to the oppositions filed by the Ordre des Comptables Professionels Agrees du Quebec to the AICPA trademark applications for THIS WAY TO CPA, THE UNIFORM CPA EXAMINATION & Design, UNIFORM CPA EXAMINATION, GLOBAL CPA REPORT, AMERICAN INSTITUTE OF CPAs, and AMERICAN INSTITUTE OF CERTIFIED PUBLIC ACCOUNTANTS, since no ground of opposition was asserted with respect to an allegation of descriptiveness, all of these oppositions failed on all of the grounds which were pleaded.

The next group of decisions related to the oppositions filed by the Chartered Professional Accountants of Ontario against the following four trademark applications filed in the name of the Chartered Institute of Management Accountants for the trademarks CIMA, CIMA & Design, CIMA STRATEGIC SCORECARD and THE CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS. All four of these trademark applications were refused, based on the provisions of Section 30(b) of the Trademarks Act, in that the applicant had asserted an incorrect date of first use.

Turning next to the opposition filed by the Chartered Professional Accountants of Ontario to the application filed by Association of International Certified Professional Accountants for the trademark CHARTERED GLOBAL MANAGEMENT ACCOUNTANT, this application was refused, based on an allegation that the trademark was clearly descriptive contrary to Section 12(1)(b, as well as on a Section 30(e) ground of opposition, based on the fact that as of the filing date of the trademark application, the trademark was in fact an asset of a previously formed joint venture, rather than an asset of the applicant. The application was filed by an existing entity and based on proposed use of the trademark in Canada, but the entity which was the intended owner of the trademark was not yet created at the filing date of the application. Although there was no fraudulent intention, the Board held that the misstatement in the trademark application was sufficient to form the basis for a successful ground of opposition.

The final opposition in this series of oppositions was an opposition by the Certified Management Accountants of Ontario to an application for the trademark THE CHARTERED INSTITUTE OF MANAGEMENT ACCOUNTANTS, filed by the Chartered Institute of Management Accountants, of the United Kingdom. This application was also refused, based on the provisions of Section 12(1)(b) of the Trademarks Act, namely that the trademark was clearly descriptive of the services.

An overview of these decisions suggests that the Trademark Opposition Board will not shrink from refusing trademark applications of professional associations on the basis that they are considered to be clearly descriptive of these services covered by the applications, even where the acronyms which are the subject of the trademark applications may be acronyms which would not be recognized by the general public.

Trademarks Opposition Board Decisions – July to December 2019 Part 2 – Section 45 Decisions

Section 45 proceedings in Canada are proceedings to cancel a trademark registration for non-use at the request of a third party.  If the proceedings are contested by both the registered owner and the requesting party, then the result will be a decision by the Board to cancel the registration, to maintain the registration, or to maintain the registration for some of the goods or services, and to cancel it for others (a “partial decision”).

In the first six months of 2019, the Board issued 35 decisions in Section 45 matters.  In the second half of 2019, the Board issued another 29 decisions.  The total 2019 decisions of 64 cases, was down somewhat from the 82 Section 45 decisions which were issued in 2018.

Partial decisions, where some of the goods/services were maintained and some were deleted from the trademark registration, were issued in just under 50% of all decisions.  The number of cases where the trademark registration was expunged and the number of cases where the trademark registration was maintained were almost identical.

In the first half of 2019, and in 2018, there was an equal split between decisions to maintain and decisions to expunge and partial decisions.  Accordingly, during this latest time period, there were a much more significant number of partial decisions issued by the Board.

Both parties filed written representations in 45% of all cases.  Neither party filed written representations in 24% of all of the cases, and the registrant only and the requesting party only cases were 17% and 14% of the total cases respectively.

When only the requesting party filed written representations, there were no cases where the registration was maintained in its entirety. Where only the registrant filed written representations, in every case there was a partial decision issued. Where neither party filed written representations, in only one case was the registrant expunged in its entirety.

Oral hearings were again much less common in Section 45 proceedings than in opposition proceedings.  No hearing was held in 65% of all of the cases.

Registrants were self-represented in roughly 17% of all of the cases, and the registration was only maintained in full in one of these cases.

The length of time from the date of the issuance of the Section 45 Notice, which is the commencement of the Section 45 procedure, to the date of the decision, ranged from 22 months to 41 months, with the average duration being 29 months.

In our next posts, some of the most important Section 45 decisions decided in this time period will be highlighted.

Trademarks Opposition Board Decisions – July to December 2019 Part 1 – Trademark Opposition Decisions

As we reported in our article on decisions of the Trade Marks Opposition Board for the first six months of 2019, the Board decided 25 trademark opposition decisions from January to June 2019.  For the last six months of 2019, the Board decided over twice that number, with 56 decisions in trademark opposition proceedings being released during this time period.  The total number of opposition proceedings decided for 2019 is therefore 81, which is roughly the same as 2018, when 82 decisions were issued.

During this time period, opponents prevailed in slightly over half of the cases, whereas applicants were successful in having the opposition rejected in about one-third of all of the decided cases.  A partial decision, namely a decision in which the opposition is rejected in respect of some goods or services, and in which the application is refused in respect of other goods or services, made up 14% of the decisions.

In most of the decided opposition cases, evidence was filed by both of the parties (68%) or by the opponent only (30%). There was only one case where evidence was filed by the applicant alone, no cases where neither party filed opposition evidence.

In cases where both parties presented evidence, the opponent prevailed in 57% of the cases, and the applicant prevailed in only 33% of the cases.

In the first half of 2019, cross-examinations were conducted in only 28% of the decided cases, whereas in the second half of 2019, cross-examinations were conducted in 25 out of the 56 issued decisions, a significant increase over the cases in the first half of 2019, and an even more significant increase over 2018, when cross-examinations were conducted in only 18% of all of the cases.

Turning to written arguments, which are filed after the evidence has been filed, in cases where only the applicant filed a written argument, the applicant was successful in 90% of the cases.  Where only the opponent filed a written argument, then the opponent succeeded in having the application refused in its entirety, or at least in having some of the goods or services refused, in 100% of those cases.

The final stage of an opposition proceeding in Canada is the oral hearing, and in the cases decided in the second half of 2019, hearings were attended by both parties in 48% of the cases, by the applicant only in 20% of the cases, by the opponent only in 9% of the cases, and by neither party in 23% of the cases.  In cases where both parties attended a hearing, the opponent succeeded in roughly 80% of the cases.  Where the opponent alone attended a hearing, the opponent also succeeded in roughly 80% of the cases.  Where neither party requested that an oral hearing be held, in 77% of the cases the opponent succeeded, or a partial decision was issued.

 It is clear that the filing of an opposition represents a significant time investment, and for an opponent whose application is opposed, the application process is considerably delayed.  The number of months elapsed from the date of filing of a Statement of Opposition, until the date on which the decision was issued ranged from a low of 31 months to a high of 88 months, with the average number of months being 56.5 months.   9 of the cases had a duration of between 80 and 89 months, which is longer than any of the decisions issued in the first six months of the year.

In only 5 of the cases which were decided during this period of time was either the applicant or the opponent not represented by a trademark agent.

In examining the identities of the parties filing or defending trademark opposition proceedings in Canada, the majority of trademark applicants were based outside of Canada, but a majority of opponents were Canadian-based entities.

A review of the 2019 Trade Marks Opposition Board decisions in opposition proceedings confirms that full participation in the proceedings, through the filing of evidence, conducting cross-examinations, filing of written arguments, and attending at oral hearings, all improve a party’s chances of success.

In upcoming posts, after reviewing the Section 45 decisions of the Trade Marks Opposition Board, we will discuss the most noteworthy decisions issued by the Board from July to December 2019.

Who Owns Copyright in a Photograph of You

A recent string of lawsuits featuring celebrities being sued by paparazzi photographers for copyright infringement after the celebrities posted paparazzi photos on social media have received increasing media coverage.  Khloe Kardashian, Jennifer Lopez, Nicki Minaj, Jessica Simpson and Gigi Hadid (twice!) have been sued for copyright infringement based on this legal position.

Many people assume that a photograph of one’s self is their property and they have the right to share that photo in any way that they see fit.  Copyright law in Canada is very clear that the owner of the copyright a photograph is the photographer, and not the subject of the photo.  For celebrities, the solution is fairly simple: hire a photographer to take your photos, obtaining a written license agreement assigning ownership of the copyright from the photographer to the celeb.  If a celebrity simply must post a paparazzi photo to their social media accounts, they should look into licensing the photo ahead of time, paying a fee, and avoiding the cost and headache of a potential lawsuit.

Most people will not face this exact scenario, as they are not followed around by the paparazzi daily, but the same principle applies in more universal scenarios.  In any situation in which you are paying someone to take photographs for you, whether that be product photos for a website or advertising, headshots, or even family photos, the owner of the copyright in the photographs is the photographer, unless you have a written license agreement that says otherwise.  Negotiating and drafting a simple license agreement at the beginning can save a lot of time and money by avoiding a potential lawsuit and making sure that you own copyright in photographs of you.

Canada Extends Trademark Deadlines - Update

The Registrar of Trademarks had previously extended all deadlines for trademark matters in Canada until April 1, 2020.  This relief has now been extended further to May 1, 2020. The mechanism for taking this exceptional step is found in Section 66(2) of the Trademarks Act, which allows the Registrar to declare additional days as designated days, meaning that the deadline falls on the next day that is not a designated day.  Designated days are generally weekend days and holidays, but this unprecedented step will move all deadlines falling from March 16 to April 30 until May 1st.  The Office has also indicated that they will provide further updates and may extend this date again.

Avoiding Trademark Backlash

When a company is deciding how to deal with a potential intellectual property issue, it is important to determine where there is a strong legal case that can be established.   However, it is also important to take into consideration how the issue will be interpreted by the public. There may be cases where the law is completely on your side, but where public opinion turns so sharply against your company that taking action would cause a public relations disaster.

This recently happened to The Walt Disney Company, which recently received backlash for a $250 licensing fee that it requested from Emerson Elementary School in Berkeley, California. Despite the fact that the school screened the film The Lion King without a license, Disney not only issued an apology, but then-CEO Bob Iger indicated that he will personally be donating money to the school in an attempt to make amends.   The public criticism in this case was so swift that Disney apologized very quickly, but surely it will now be more difficult for Disney to get other schools and community organizations to pay licensing fees, since it seems clear that Disney may not be in a position to enforce these fees.

Another recent example of this phenomenon is the recently published book titled Rage Baking, an anthology of essays and recipes by women who turned to baking post-2016. The authors of the book had to make a statement after receiving a torrent of criticism online coming to the defense of a woman named Tangerine Jones who had been using the hashtag #ragebaking on Instagram for several years. Although there is of course no copyright in the title of books, nor in hashtags, the public seems to have largely sided with Jones. In this instance, although Jones clearly did not have any legal claim against the authors or the publisher, because the public sentiment was on her side, she was the recipient of a good deal of public goodwill and ultimately an apology.

Brand owners should be aware that when they are evaluating a potential IP issue, it is not enough to merely examine what rights and remedies are prescribed under the various IP statutes. Public backlash can be swift, and does not always end up favouring the party that has the law on their side.

Canada Extends Trademark Deadlines

The Registrar of Trademarks has extended all deadlines for trademark matters in Canada until April 1, 2020.  The mechanism for taking this exceptional step is found in Section 66(2) of the Trademarks Act, which allows the Registrar to declare additional days as designated days, meaning that the deadline falls on the next day that is not a designated day.  Designated days are generally weekend days and holidays, but this unprecedented step will move all deadline falling from March 16-31st to April 1st.  The Office has also indicated that they will provide further updates and may extend this date again, and we anticipate that it will likely be extended.

Time May Be Running Out - CIPO Issues New Guidelines on Extensions of Time in Examination

On January 17, 2020, the Canadian Intellectual Property Office amended the Practice Notice relating to extensions of time in examination to provide an update that the Office will no longer grant an extension of time to respond to an examination report unless the applicant is able to demonstrate exceptional circumstances that would justify granting an extension.  This is a reversal of previous Office practice, where applicants were able to request one six month extension of time to file a complete response to any examination report, and exceptional circumstances were required only when seeking additional extensions of time.

Examples of exceptional circumstances that the Office will accept as justification for granting additional extensions of time include cases where there is a pending cancellation action or opposition against a cited application or registration, a recent change in agent, or a pending assignment which has been filed but not recorded.  These exceptional circumstances can be used as justification to obtain many extensions of time, for example including the duration of an opposition against a cited application.

The Canadian Intellectual Property Office has also expanded the list of exceptional circumstances to include an application that has received an objection based on distinctiveness, confusion, descriptiveness, and some other very serious objections.  These new exceptional circumstances will only be permitted to be used to obtain one single extension of time over the life of the application.  For this reason, applicants will want to be prudent in choosing when to use their one extension of time to ensure that they have ample time to file a proper response where it may be necessary to file significant affidavit evidence demonstrating the acquired distinctiveness of the trademark throughout Canada.

These new guidelines are in force now, however, the old rules will continue to apply for applicants responding to examination reports issued prior to January 17, 2020.

Canada’s New Trademark Law - Where do we stand 6 months in?

We are now at the six month anniversary of the coming into force of Canada’s new trademark law, and it is therefore useful to examine how the Canadian Intellectual Property Office has coped with those changes in the first six months since the law was introduced on June 17, 2019.

It will take some time to be able to assess the changes which have been made to examination, such as through the introduction of the new inherent distinctiveness objections, or the effects of the changes brought about in opposition and Section 45 procedures.

What is clear from an examination of filing and registration statistics is that the past six months have been extremely busy for the Office.  Because of the removal of the requirement to file a Declaration of Use, the number of trademark registrations which issued in 2019 saw a marked increase.  For example, in 2018, just under 25,000 applications issued to registration.  In 2019, about 15,000 registrations issued from January 1 to June 17, 2019.  But from June 17, 2019 to date, just over 40,000 applications have issued to registration, for a total of 55,000 registrations issued during the calendar year 2019. 

For the six months leading up to June 17, 2019, there were 34,228 applications filed, and since June 17th, an additional 28,500 new trademark applications have been filed.    Of this total, just over 5,000 of these new trademark applications were filed using the new Madrid Protocol system.  For comparison purposes, in 2018, about 63,000 trademark applications were filed, and so the total number of applications filed remained roughly constant.

When the new law came into force in June 2019, the average time from filing to the issuance of a first examination report was 16 months.  Since June, that time has expanded to the current average of 19 months from the date of filing through to the issuance of the first correspondence.

Trademarks Opposition Board Decisions – January to June 2019 Part 2 – Trademark Opposition Decisions

From January to June 2019, the Trademarks Opposition Board issued decisions in 25 opposition proceedings. This compares to a total of 82 opposition proceedings which were determined by the TMOB in 2018, and it therefore appears that the Board will issue far fewer decisions in 2019 than they did in 2018, unless there is a significant increase in opposition decisions which are released in the second half of the year.

 Opponents based their oppositions on grounds which included reliance on an existing Canadian trademark registration in 64% of all of the decided cases, which is nearly identical to the ratio of cases decided in 2018 in which the opponent included a Section 12(1)(d) ground of opposition based on a likelihood of confusion with a confusing trademark registration.

 Turning to an examination of the filing of evidence by the parties, evidence was filed by the opponent in almost every case which was decided, and similarly applicants filed opposition evidence in nearly all of the decided cases as well. Both opponents and particularly applicants were therefore filing opposition evidence at a much higher rate in the cases determined in 2019 than had been the case in the 2018 decided cases.

 In the 2018 decided opposition cases, cross-examinations were conducted in only 18% of all cases, whereas in the decided cases in 2019, cross-examinations were conducted in 28% of the cases. It therefore appears that this tool has become slightly more commonly used in cases decided this year.

 Both parties filed written arguments in over 50% of all of the decided cases. It was more common for either the applicant alone or the opponent alone to file a written argument, than for neither party to file a written argument.

 Oral hearings were held in roughly 50% of the decided 2019 opposition cases. This is roughly the same figure which was observed in the 2018 cases. Where an oral hearing was held, in the vast majority of these cases, both parties attended the hearing.

Where no written argument was filed by either party, the application was refused in 100% of these cases. Where a written argument was filed by only the opponent, the application was refused in 4 out of 5 cases.

 In considering the decisions reached by the Board in these opposition cases, the trademark application at issue was refused in just over 50% of all of the cases. This is somewhat lower than the 60% success rate by opponents in the opposition proceedings which were determined in 2018. Of the cases in which the opponent was not completely successful in having the application refused, the opposition was rejected three times more often than the cases in which the Board reached a partial decision in which the opposition was successful with respect to some of the goods or services and unsuccessful with respect to other goods or services.

Looking at the representation of parties in opposition proceedings, there were only two cases decided from January to June 2019 in which a party to an opposition was not represented by a trademark agent, in one case the applicant, and in the other case the opponent.

Turning to a consideration of the length of opposition proceedings in Canada, the shortest time from the filing of a Statement of Opposition until the issuance of a decision by the Board was 30 months. The time frame was between 30 and 40 months in approximately 35% of the cases and, and equal numbers of decisions took 40 - 50 months, 50 - 60 months, 60 - 70 months, and over 70 months, with the lengthiest process taking 77 months from the filing of the Statement of Opposition to the date of the decision.

We also reviewed the decisions to determine the number of cases in which the parties were Canadian applicants or opponents. 60% of the applicants involved in the contested opposition proceedings had addresses outside of Canada, and 64% of opponents resided outside of Canada.

As with the 2018 decisions, a review of the Board’s opposition decisions in the first half of 2019 suggests that opponents can increase their chances of succeeding by filing affidavit evidence, filing written arguments, and attending an oral hearing. From the perspective of an applicant seeking to defend its trademark application from an opposition, the evidence presented by these cases also suggests that the filing of opposition evidence, the filing of written arguments, and attendance at it a hearing before the Board all increase the likelihood of an application being maintained.

In our upcoming posts, we will discuss the most noteworthy of the Opposition Board decisions which which were issued by the Trademarks Opposition Board from January to June 2019.

Trademarks Opposition Board Decisions – January to June 2019 Part 1 – Section 45 Decisions – Non-Use

The Trademarks Opposition Board has now issued all of its decisions for the six month period from January to June 2019, and we have reviewed these decisions to determine whether there are any trends or useful practice points which can be gleaned from these decisions.

Beginning with the decisions in Section 45 non-use cancellation matters, the Board released 35 decisions in the first six months of this year, as compared to 82 Section 45 decisions which were decided by the Board in all of 2018, meaning that the Board is roughly on course to decide the same volume of cases in both years.

Contested Section 45 proceedings can result in a decision to maintain the registration, to expunge the registration on the basis of non-use, or to maintain the registration for some goods or services and delete other goods or services from the registration. The outcomes in the first half of 2019 show a virtually identical ratio of potential outcomes to the Board’s decisions in 2018, with decisions to expunge, decisions to maintain and partial decisions being equally common.

Following the filing of evidence of use by the registrant, both parties in turn have the opportunity to file written representations. Both parties filed written representations in nearly 60% of all of the contested proceedings, as contrasted with the situation in 2018, in which it was much more common for the registrant alone to file written written representations. In the cases decided in 2019 to date, the registrant was the sole party filing written representations in only one case, and in that case, the registrant was successful in maintaining the registration. Also in 2019, there were more cases in which the requesting party alone filed written representations, and in those cases, the registration was maintained only 20% of the time.

Turning next to attendance at oral hearings before the Trademarks Opposition Board, in almost 70% of all contested section 45 proceedings, neither party requested an oral hearing. There were no cases in which the registrant alone attended an oral hearing. There were an equal number of cases in which either both parties or the requesting party alone attended an oral hearing. There were only two cases where the requesting party alone attended a hearing and in which the registration was maintained, and there was only one case where both parties attended an oral hearing in which the registration was maintained.

The registrant was not represented by a trademark agent in only three of the decided cases this year to date. In two out of those three cases, the registration in question was expunged. 

With respect to the length of Section 45 proceedings, the shortest turnaround time from the date of the issuance of a Section 45 notice up to the date of the decision was 18 months. However, the vast majority of the cases took between 20 and 30 months, and in 20% of the decided cases, the length of time of the proceedings was between 30 and 40 months. 

The key lesson gleaned from a review of the 35 Section 45 proceedings decided in the first half of 2019 remains the same as it was in the 2018 decisions. As long as some evidence of use is filed by the registrant, there are twice as many cases in which the registration is maintained, at least in part. It is valuable for a requesting party to file written representations and attend a hearing in order to increase the chances of a successful outcome.

A Deep Dive into Canada’s New Trademark Law Part 8 – Nice Classification System

Canada’s trademark law is changing, and these changes will be coming into force on June 17, 2019.  The sweeping changes which the new law will usher in are the most significant since the 1950’s.  We therefore thought it was appropriate to take a deep dive into the new legislation, to briefly outline the main areas of change, and how trademark owners will be impacted. 

 One major new feature of the new trademark law is that all goods and services will now have to be listed according to the Nice classification system, which is comprised of 34 classes of goods and 11 classes of services. The Nice classification system is a WIPO-administered, international classification system used to categorize goods and services for the purposes of trademark protection.The Office has, since 2015, informally classified all applications and registrations according to Nice, but such classifications have had no legal effect.

 In all cases, the Registrar determines which classifications will be accepted, and this determination is not subject to appeal.

 As a result of the Nice classification system, both filing fees and renewal fees will be increased, since the fees will be paid according to the number of classes covered.

 With respect to the transitional provisions, the Nice system will apply to all applications which have not been advertised as of the coming into force date of the new Act, namely June 17, 2019.

 For all trademark registrations that have issued to registration without any Nice classification, the Registrar may issue a notice under Section 44.1 of the new Act, and the owner will have six months to provide Nice classifications. If the Nice classification is not provided, the registration will be expunged. Alternatively, the registrar may refuse to renew a registration, in which case the registration will expire

 In addition to a requirement that Nice classes be provided for all applications and registrations, the Canadian Intellectual Property Office will also continue to require that goods and services be specified in “ordinary commercial terms", which will further complicate the application process.