Report from CIPO on the Public Consultations on the Proposed Amendments to the Trade-marks Regulations

Published on September 1, 2017

Please see message from CIPO below
Thank you for your contributions during the public consultations on the proposed amendments to the Trade-marks Regulations. 
The purpose of these public consultations was firstly to describe the policy rationale for the changes to existing provisions; secondly to provide an introduction to the Madrid Protocol; and finally to serve as an opportunity to receive input and comments on any issues regarding the Regulations
All feedback received on the content of the draft Regulations has been compiled, reviewed and analyzed. The main comments can be summarized as follows: 
  • Many stakeholders welcome the modernization of the Canadian trademark framework,  and Canada’s accession to the Madrid Protocol, the Singapore Treaty, and the Nice Agreement
  • Stakeholders identified several sections of the Regulationsas being difficult to understand. While acknowledging that modern drafting conventions do not alter existing regulatory practice, many provisions were seen as incomprehensible. Stakeholders would like to see those provisions clarified and where appropriate re-worded;  
  • As the Madrid Protocol system is a new addition to the Regulations, stakeholders felt that the new provisions were insufficient to inform and familiarize trademark practitioners with the processes and obligations of the system. Clarification and guidance is needed;  
  • Although the “Declaration of Use” requirement has been formally removed from the Trade-marks Act, some stakeholders proposed the inclusion of a regulatory provision that would allow for the voluntary submission, formal acceptance and publishing of use information for each trademark;
  • Some stakeholders identified several sections of the Regulations related to proceedings administered by the Trademarks Opposition Board as being difficult to understand. There were many questions and some concerns about the language used in some provisions (i.e. divisionals, leave test, and calculation of time); 
  • There was clear support for the introduction of electronic filing of evidence and the change to the sequence of the filing of written representations in opposition proceedings; and 
  • There was a great deal of interest in participating in the future development of Registrar-initiated summary expungement proceedings going forward.
Recognizing modern drafting conventions, we will work with the Department of Justice Canada drafters to clarify, to the extent possible, those provisions that were found to be challenging to understand.  Given the complexity of this work and the interdependencies, not all potential changes will be captured in the revised draft of the Regulations that will be published in the Canada Gazette Part I. 
Furthermore, in some instances, changes to language may not be possible. As we go forward, the Canadian Intellectual Property Office (CIPO) will be drafting guidance documents and practice notices to ensure that the regulatory practice is clear. We encourage our stakeholders to continue to participate and we will be actively seeking your input as we develop these documents. With the support of the World Intellectual Property Organization (WIPO), further information on processes and procedures related to the Madrid Protocol will also be provided. 
Starting this fall, CIPO will hold targeted in-person sessions, working groups, as well as web-based seminars to inform stakeholders on the implementation of the Trade-marksRegulations.
We are committed to working together and thank you for your continued support and collaboration as we work to modernize Canada’s trademarks regime.
Mesmin Pierre 
Director General, Trade-marks Branch
Canadian Intellectual Property Office
Céline Tremblay
Acting Chairperson, Trade-marks Opposition Board
Canadian Intellectual Property Office