PATENT RULE CHANGES - LATE ENTRY INTO CANADIAN NATIONAL PHASE

Currently, the Canadian Patent Rules permit simplified late entry into the Canadian national phase up to 42 months from priority date, by the payment of additional Late Fees.

The Canadian Government has recently published proposed changes to the Patent Rules which may impact the ability of applicants to late enter the Canadian national phase of international patent applications. The draft Rules, if ultimately adopted, could require applicants wishing to enter the Canadian national phase after the 30-month national entry due date, to establish that the failure to timely file Canadian national phase application was unintentional.

It is presently anticipated that the patent rule changes will be finalized and promulgated in force sometime in 2019. Until the new Rules are clarified, applicants facing 30-month national entry due dates ending in 2018 may wish to ensure that Canadian national phase requirements are completed before the proposed rule changes come into effect.

CANADIAN INTELLECTUAL PROPERTY OFFICE - OFFICE CLOSURES

As a result of flooding in the Ottawa-Gatineau area, the main Gatineau, Quebec office of the Canadian Intellectual Property Office (CIPO) is closed on 8 May, 2017 and 9 May, 2017.

The closure of the CIPO office in Gatineau does not, however, affect the operation of official Designated Establishments, such as the Toronto Regional Office of Innovation, Science and Economic Development Canada (ISED) , where CIPO correspondence intended for the Commissioner of Patents, the Registrar of Trademarks and the Copyright Office may be delivered in person. It is anticipated, however, that documents filed through the Toronto Regional Office of ISED on Monday May 8, 2017 or Tuesday, May 9, 2017 will receive a 10 May 2017 filing date.

If you have any questions with respect to any time sensitive correspondence filed with CIPO on 8 May, 2017 or 9 May, 2017 either electronically, or through an official Designated Establishment, please do not hesitate to contact one of our Firm professionals.

CANADIAN TRADEMARK RENEWAL NOTIFICATIONS - IMPLEMENTATION OF GOODS/SERVICES CLASSIFICATION

ADVANTAGES OF EARLY RENEWAL

Amendments to the Canada Trade-marks Act are anticipated to come into force in 2019 which will require that goods and services associated with Canadian trademark registrations be grouped and classified according to the Nice Classification. In anticipation of the Act changes, the Canadian Trademarks Office has recently begun forwarding notices advising of the new classification requirements.

The trademark amendments will additionally shorten the current term of renewal for Canadian trademark registrations from fifteen (15) years to ten (10) years.

At present, it is unknown whether the Canadian government will also require the payment of separate government fees where multiple “classes” of goods/services are associated with a registration.

To take advantage of the current longer renewal period, and defer the expected expense in classifying the listing of registered goods/services, trademark owners may consider now proceeding with the early renewal of Canadian trademark registrations where renewal fees otherwise will fall due after 2019.

If Riches, McKenzie & Herbert LLP may be of assistance in arranging for the renewal of any registrations, please do not hesitate to contact either Michael Adams or Marta Tandori Cheng.

AMENDMENTS TO THE LAWS REGARDING NON-FRENCH TRADEMARKS ON PUBLIC SIGNAGE IN QUEBEC

Effective November 24, 2016 the Quebec government has amended the Regulations to the Charter of the French Language with respect to the display of non-French trademarks on public signage and posters. The new Regulations require that any non-French trademarks that are used on exterior and exteriorly visible public signs or posters in Quebec must be accompanied by a generic French language descriptor of the type of services or goods for which they are provided.

The new Regulations apply not only to permanent signs, but also to posters which are displayed in Quebec either outside of premises, or inside thereof and intended to be viewed from outside.

For existing signage, the Quebec government has provided a three (3) year grace period, ending November 24, 2019, by which to modify existing signage/posters for compliance with the new Regulations. Any new signage, however, will have to immediately comply with the revised Regulations.

RECOMMENDATIONS

At the present time, the Quebec government has apparently not provided clarification as to whether or not coined trademarks, acronyms, surnames, or any previously exempted terms (such as given names, place names designating places outside of Quebec, character names, and names of a distinctive cultural nature) are to be considered “non-French trademarks”, so as to require the mandated accompanying French descriptor.

In the absence of clarification, we recommend considering undertaking steps to update existing Quebec signage as of at least November 2018. Presumably, this would allow sufficient time to ensure erection of modified signage prior to the scheduled November 24, 2019 expiry of the three (3) year grace period.

To act with utmost caution, and in the absence of favourable guidance suggesting that the new Regulations do not apply to trademarks which comprise coined terms, surnames, or other previously exempted terms, we suggest that any new posters/signage displaying trademarks in the Province of Quebec be accompanied by a French language generic descriptor of goods and/or services.

An official French language guide regarding the format of accompanying French language descriptors is available to view HERE (see in particular pages 8 to 12). An English equivalent has not yet been made available by the Quebec government.

In particular, it should be noted that to comply with the new Regulations, accompanying French language descriptors need not be in the same material or size as the non-French trademark. However, these descriptors must be permanently visible and able of being read in the same visual field as the sign or poster displaying the trademark.

Our office is available to answer any further questions which may arise as a result of the foregoing. As such, we invite you to please submit any further queries you may have regarding the above directly, by email (riches@patents-toronto.com) or by phone (416-961-5000).

CONGRATULATIONS TO TOM McCONNELL

All of the members of Riches, McKenzie & Herbert LLP wish to congratulate Tom McConnell on his receipt of the Marie F. Morency Memorial Prize for achieving the highest mark on the 2014 Patent Examination Drafting Paper.

Tom’s award follows Michael Yun’s receipt of the J. Edward Maybee Memorial Prize last year, in achieving the highest overall mark on the 2013 Patent Agent Examination.

DAN HITCHCOCK – Congratulations on Retirement

After obtaining a degree in electrical engineering from McMaster University in 1977, Dan attended Law School at the University of Toronto. Dan was called to the Bar as a Barrister & Solicitor in the Province of Ontario, Canada in 1983, and practiced throughout his entire professional career as an associate and then a partner of Riches, McKenzie & Herbert LLP, focussing on Intellectual Property ligation matters.

Effective September 30, 2015, Dan Hitchcock has fully retired as a partner of Riches, McKenzie & Herbert LLP.

All of the professionals and staff at Riches, McKenzie & Herbert LLP congratulate Dan and wish him all the best on his future endeavours.

Amendments to the Trade-marks Act Proposed by Canadian Government

On March 28, 2014, the Government of Canada introduced significant amendments to the Trade-marks Act. The amendments are part of Bill C-31, the Economic Action Plan 2014 Act, No. 1, an omnibus budget bill that proposes to alter almost 40 statutes.

Bill C-31 includes amendments that seek to harmonize Canadian trade-mark practice with international norms. For example, the bill proposes simplification of s. 30 filing grounds, reduction of registration term from 15 to 10 years, and introduction of divisional applications. In addition, the definition of a trade-mark is proposed to be expanded to include non-traditional marks such as a “sign” or “combination of signs” such as a word, personal name, design, letter, numeral, colour, figurative element, three-dimensional shape, hologram, moving image, a mode of packaging goods, sounds, scents, tastes, textures, and the positioning of a sign. Use of the expressions “trade-marks” and “wares” are replaced by “trademarks” and “goods” respectively.

The amendments to the Trade-marks Act introduced by Bill C-31 are available in full detail here. These changes are likely to be revised as Bill C-31 progresses through the legislative process.

Five Intellectual Property Treaties Tabled in House of Commons

On January 27, 2014, the Parliamentary secretary to the Minister of Foreign Affairs tabled five intellectual property treaties in the House of Commons:

  • the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks,
  • the Singapore Treaty on the Law of Trademarks,
  • the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks,
  • the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs, and
  • the Patent Law Treaty.

It is expected that prior to implementing and ratifying these treaties, significant amendments will be required to be made to the Patent Act, Trade-marks Act, and Industrial Design Act. CIPO has published papers prepared by the Department of Justice on these expected changes:

The government will observe a waiting period of at least twenty-one sitting days prior to introducing any necessary implementing legislation in Parliament.

New Global Patent Prosecution Highway Agreement

Effective January 6, 2014, Canada is participating in a new Global Patent Prosecution Highway Agreement (“Global PPH”). Participating international intellectual property offices include Australia, China, Denmark, Finland, Germany, Hungary, Iceland, Japan, Korea, Mexico, the Nordic Patent Institute (that covers the countries of Denmark, Iceland, and Norway), Norway, Portugal, Russia, Spain, Sweden, the United Kingdom, and the United States of America.

Under the Global PPH, a request may be made based on national or international work products from any one of the participating international intellectual offices. Please note that to file a request for Global PPH prosecution of a non-originating Canadian application, the international or international work product must share a common priority with the current Canadian application, but need not be the first filed work product in a corresponding patent family.

A full list of participating countries and additional details regarding the Global PPH is available from CIPO.

New Final Action Procedures

On December 28, 2013 new Patent Rules on final action practice came into force. These amendments modify the Commissioner’s role in final action practice. Highlights of the changes include that:

  • The Commissioner shall review an entire application after final rejection rather than merely reviewing the grounds of rejection;
  • The review will not consider any amendments made in response to the final rejection;
  • After the review, the Commissioner may allow an application rather than sending it back to the Examiner for allowance; and
  • The Commissioner may also determine that specific amendments are necessary and that an application will be allowed upon adoption of such amendments.

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Riches® E-News is intended for informative purposes only and does not constitute legal advice. For further information respecting any of the foregoing, or legal assistance with respect to any intellectual property matter, please do not hesitate to contact any of the professionals at Riches, McKenzie & Herbert LLP.

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