The Intellectual Property Section of the Canadian Bar Association share comments with the Canadian Intellectual Property Office, or CIPO, about proposed changes requesting the Registrar of Trademarks to give public notice under subsection 9(4) of the Trademarks Act.
The 2018 Budget Implementation Act amends the Trademarks Act “to create a simple mechanism to allow the Registrar to give public notice that subparagraph 9(1)(n)(iii) does not apply with respect to a badge, crest, emblem or mark that was the subject of a public notice of adoption and use as an official mark, if the entity that made the request for the public notice is not a public authority or no longer exists.”
The subsection says that the Registrar may give public notice that the Act does not apply to an official mark, if the holder is not a public authority or no longer exists. If the Registrar is satisfied that a review of a file is necessary, “a notice will be sent to the official mark holder requesting evidence of the holder's public authority status. If the Registrar is not satisfied, a public notice will not be sent to the holder of the official mark.”
Below is a summary of the CBA’s comments on the practice.
First, the notice should make it clear whether requests can be submitted electronically or through CIPO’s platform. It should also be clear how evidence of the status or existence of an official mark holder should be submitted. And the fee should be substantial, at least $500, to avoid frivolous or abusive requests.
It should be clear whether a requesting party merely has to raise a doubt as to the public authority status of a holder, or whether it is necessary to establish that a holder is not a public authority.
In addition, the CBA Section suggests making it clear that “a copy of the notice will be sent to the appointment agent of the holder,” and that the holder should have the opportunity to request a time extension fairly easily.
Finally, the letter recommends “that the holder be given a full opportunity to respond, as is the case during Examination, regarding evidence sufficiency if the Registrar is of the view that it falls short. It is likely less cumbersome for CIPO and public authorities to resolve the issue at the outset, rather than triggering multiple new proceedings.”