Now that the Madrid Protocol has been in force in Canada for close to 18 months, the Canadian Intellectual Property Office (CIPO) has started substantive examination of international applications designating Canada (Protocol Applications). Brand owners may find that this process can present unique challenges in Canada, as Shannon Young and Sanjukta Tole explain.

Appointment of local agent

All Protocol Applications owned by non-Canadian applicants require a registered local agent to be appointed in order to receive all correspondence from CIPO regarding an application. If a WIPO representative was identified in the Protocol Application but does not appear on the list of Canadian trademark agents or is not domiciled in Canada, CIPO will issue a courtesy letter advising that further correspondence regarding the Protocol application will only be sent directly to the applicant or an appointed Canadian agent.

If no local agent is appointed, material notifications (such as office actions, default notices, notices of approval for advertisement and notices of refusal setting out the time an appeal deadline) will not be received by the representative before WIPO.

Appointing a local agent can ensure that all documents issued by CIPO in respect of a Protocol Application will be received and managed, particularly in view of the fact that CIPO engages in substantive examination.

Goods and services descriptions

Descriptions of goods and services in Protocol Applications must be defined using “ordinary commercial terms”. The degree of specificity required in Canada is high and brand owners typically find that descriptions which have been accepted in other jurisdictions require further description in Canada.

Along with the Madrid Protocol, Canada also adopted the Nice Classification system on 17 June 17 2019. While the categories of goods and services are harmonised across all member countries, Canada’s unique requirements for specificity in describing goods and services in Protocol Applications can result in issues with classification.

CIPO offers some guidance for descriptions via a searchable online manual containing a non-exhaustive list of acceptable terms, although this is regularly reviewed and updated. Reliance on the manual along with other strategies can help strike a balance between obtaining a wide scope of protection while meeting requirements for specificity.

Likelihood of confusion

When examining a Protocol Application, CIPO will issue objections based on any valid third party trade mark registration or active prior pending applications that may likely be seen as confusing.

CIPO’s interest is in preventing confusion among the public rather than protecting pre-existing rights of brand owners. Consequently, some of the usual means of overcoming such objections, such as consents, may not always be available. Pre-filing availability searches for Canada can be a valuable tool in these circumstances to pre-emptively avoid such objections.

Lack of inherent distinctiveness 

Through the amendments to the Canadian legislative scheme, CIPO has been provided with the means to challenge the distinctiveness of marks on a discretionary basis. Therefore, a Protocol Application may be held up by an examiner if he/she views the mark as lacking inherent distinctiveness resulting from a lack of function as an indicator of source. Some types of trade marks that are flagged as lacking inherent distinctiveness include:

• marks that describe geographic locations and the character or quality of goods/services;
• names or surnames;
• common designs or foreign characters/words depicting something common to the trade;
• names of colours or colour(s) applied to the surface of a three-dimensional object if they are commonly used by a number of traders in the relevant marketplace;
• laudatory words;
• trade marks comprising one letter or number (and in some cases, trade marks comprising two letters or numbers) or phone numbers
• internet TLDs, and URLs

Such an objection can be overcome by successfully arguing that the mark possesses at least some inherent distinctiveness. Alternatively, a brand owner may submit affidavit evidence establishing that its mark has acquired distinctiveness throughout Canada at the date of filing of the Protocol Application – often a time-consuming and expensive exercise due to the high burden of proof on the brand owner. However, obtaining pre-filing advice to thwart the possibility of such an objection being raised may be the most practical and cost-effective tool available to a brand owner.

Harmonisation of practice

While the examination process that Protocol Applications are subject to can create some unique challenges, Canada has come a long way in harmonising most of its practices with members of the Protocol around the world. Additionally, with local guidance, there a number of strategies that brand owners could deploy prior to filing or during examination that may pave the way for an easier registration process.

By Shannon Young and Sanjukta Tole. The authors are members of Marks & Clerk Canada/Marks & Clerk Law LLP and Sanjukta is a member of the MARQUES International Trade Mark Law and Practice Team

The third session of the WIPO Conversation on IP and Artificial Intelligence will take place on 4 November from 10:00 to 16:00 Geneva time, and will include a discussion about AI and trade marks

There will be three sessions during the day covering:

1. Definitions
2. Trademarks
3. Capacity Building and Accountability for Decisions in IP Administration

You can register to participate in the session online here. More information about the meeting, including the provisional agenda and procedures, is available here in the five WIPO languages.

Representatives of WIPO member states can also participate onsite.

The Conversation on IP and AI is a continuing project by WIPO to look at the impact of artificial intelligence on IP policy. A revised issues paper on the topic was published earlier this year.

The second session of the Conversation was held from 7 to 9 July this year.

The MARQUES International Trademark Law and Practice Team, represented by Tove Graulund, Gavin Stenton and Jessica Le Gros, participated in the (postponed) Madrid Working Group meeting last week. The meeting was a hybrid virtual and in-person meeting, which worked well, with live simultaneous translation and contributions both remotely and in the meeting room.

The Madrid Working Group meeting is the forum by which Contracting Parties (generally national trade mark offices) and official observer organisations such as MARQUES work to improve the International Trade Mark system.

There were a number of important topics on the agenda including partial replacement, new means of representation of marks (and the removal of the requirement of graphic representation when filing an IR), and changes to the Regulations to allow more streamlined electronic communications with users and extensions of time limits in force majeure situations.

There were also detailed discussion on the feasibility of introducing Arabic, Chinese and Russian languages as working languages of the Madrid system.

MARQUES submitted a paper on these topics prepared by the International Trade Mark Law & Practice team, which advocates for improvements to the system from the perspective of brand owners.

MARQUES also contributed to a joint paper regarding provisional refusals, urging that the date of the deadline to respond to a provisional refusal be clearly stated on the communication from the International Bureau of WIPO to the holder of the IR. This joint paper was also signed by CITMA, AIM, ECTA and APRAM.

This is an important topic for brand owners as it is key to have clarity over not only how a deadline to respond to a provisional refusal is calculated, but also the specific date by which a response must be submitted or the holder risks losing their right.

During the meeting, the Working Group agreed that partial replacement should be implemented into the system, which will allow brand owners the option to use replacement to streamline the management of their trade mark portfolios.

Report provided by Jessica Le Gros, Co-Chair of the Team

The MARQUES Anti-Counterfeiting and Parallel Trade Team shares an update on the latest survey on IPR protection and enforcement in third countries launched by the European Commission.

The European Commission (DG Trade) has launched a public consultation in order to gather information from EU entities with an interest in the protection and enforcement of IP rights in third countries. Similar activities have been launched in the past by means of a survey.

The purpose of the present public consultation is to identify third countries in which IP rights protection and enforcement is a cause for concern, as well as to update the European Commission’s report on the protection and enforcement of IP rights in third countries.

The results of the public consultation will help the Commission to focus its efforts and resources on priority countries and on specific areas of concern, with the aim of improving worldwide IP rights protection and enforcement.

The ACPT team considers this public consultation of great value, both for the Commission as well as other stakeholders in IP rights. We therefore encourage you to participate in the survey. It will only take 10 minutes of your time. The consultation can be found here and needs to be completed by16 November.

EUIPO has published details of a new misleading invoice in circulation which takes the form of a fake EUTM renewal notice.

The misleading invoice (pictured) has recently been reported to the Office by users. It includes EUIPO’s logo, name, acronym and address

However, it is sent from Geneva, Switzerland and requests a transfer to a Polish bank account. An example of the full invoice can be viewed here.

EUIPO has published further information about the invoice and precautions that users should take on its website. EUIPO never sends letters requesting direct payment for services.

EUIPO states: “We are committed to protecting our users, especially at this time, when phishing emails and other fraud attempts remain on the rise. We take legal action whenever necessary to fight this issue, but the most important defence is awareness. Please check everything you receive in relation to your trade mark, and if you have any doubts, contact us.”

If you receive any fake renewal invoice scams, you are encouraged to report them by email to FraudonUsers@euipo.europa.eu, where you can also send any questions.

To find out what MARQUES is doing to help combat scam invoices, visit the Anti-Fraud Task Force page and contact any of the members listed.

Readers may also be interested to know that Managing IP recently published an article with tips from in-house counsel on spotting fraudulent invoices. You can read it here (subscription required).

The government of Trinidad and Tobago deposited its instrument of accession to the Madrid Protocol on 12 October 2020.

The country becomes the 107th member of the Madrid System, which now covers 123 countries.

The Protocol will enter into force for Trinidad and Tobago on 12 January next year.

Read WIPO’s announcement here.

According to Wikipedia, Trinidad and Tobago has a population of 1.36 million and a per capita GDP of $16,243 (2019 estimate). The official language is English.

It is one of the wealthiest countries in the Caribbean. Important economic sectors include oil and gas, tourism, manufacturing and agriculture.

Photo: Mr Ornal Barman, Chargé d’affaires a.i., Permanent Mission of Trinidad and Tobago to the United Nations Office and other international organizations in Geneva and WIPO Director General Daren Tang (Photo: WIPO/Berrod)

In a recent case concerning trade mark law, the Turkish Court of Appeal ruled that even in cases of bad faith on the part of the defendant, the claimant can face the principle of loss of right due to silence as well as the barrier of abuse of the right to sue.

The decisions

As some readers may be aware, two German companies, Speck Pumpen Verkaufsgesellschaft GmbH and Winter Pumpen GmbH, had a dispute over the SPECK trade mark. This trade mark conflict included some actions before the Turkish courts.

In a decision, recently upheld and finalised by the Court of Appeal, the District Court found that Speck Pumpen’s action for invalidation of Winter Pumpen’s registered trade mark (the illustrated composite mark with the word SPECK and a figure) should be refused.

The Court noted that Speck Pumpen failed to prove that Winter Pumpen registered this trade mark in bad faith. Even if it was acknowledged that this was a bad faith registration, the Court concluded that Speck Pumpen asked for the invalidation of Winter Pumpen’s trade mark 21 years after the registration. Such an attempt should be interpreted as an abuse of the right to sue and Speck Pumpen had lost its right to sue due to its long silence.

In its decision, the Ankara IP Court simply concluded that the claimant could not prove the bad faith of the defendant and failed to file its invalidation request within five years as of the registration.

But at the second instance, the District Court took a step further and added to the IP Court’s finding that filing the invalidation request 21 years after the registration is an abuse of right. The Court of Appeal approved this finding.

IP Code

This case was reviewed and decided in accordance with the rules of Decree Law No 556 on the Protection of Trademarks, repealed as of the entry into force of our Industrial Property Code No 6769. At the time of the Decree Law, the Court of Appeal had decisions in the same direction.

Now the IP Code has a clear provision, stating in summary that the owner of the earlier trade mark shall request invalidation of the later mark within five years as of the date he/she becomes aware or should have become aware that the contested mark is in use. But it keeps bad faith filings as exception, meaning that the five-year period does not apply where the later mark has been filed in bad faith.

We will be monitoring whether the Court of Appeal will adhere to its precedents rendered under the Decree Law in the past or take a different approach in the light of the clear provision in the IP Code.

By Güldeniz Doğan Alkan and Dilan Sıla Kayalıca of MARQUES member Gün + Partners