16 September 2021

Appeals of ex parte examination Refusals

A reader emailed me to ask if CIPO’s trademark .xml data can be mined to determine how often applicants appeal or seek judicial review of prosecution refusals.  The answer is a qualified yes.

10 September 2021

Top Section 9 Filers

So far in 2021 the European Data Protection Board is the top filer of Canadian Section 9 Prohibited/Official Mark applications, with 37 such filings.

01 September 2021

Dates of Trademark Applications currently at Examination

CIPO’s main trademark web page (here) has a section headed “Dates of Trademark Applications currently at Examination” in which the oldest date listed (as of 01-Sep-2021) is “Week of December 3rd, 2018”.  Does this mean that there are no unexamined applications with earlier filing dates?  No it does not.

26 August 2021

Top 20 Design Marks

The previous post looked at Canada’s Top 20 Word Marks.  That may have left you wondering about top design marks.

15 August 2021

Top 20 Word Marks

A client contacts you, enthused about a new mark that you must protect forthwith.  After the big reveal you groan inwardly—it’s another laudatory mark.

01 August 2021

Canada’s 21st Century Filings & Applicants

402,768 applicants have filed a total of 1,104,036 Canadian trademark applications so far this century, i.e. between 01-January-2000 and 26-July-2021.  25% of those filings were made by less than 1% of those applicants.

18 July 2021

1.8 Million Marks and Counting

CIPO’s trademark data update for the week ending 12-July-2021 increased the number of marks on the Canadian trademarks register to 1,800,083.

14 July 2021

The Annual Opposition Rate

As a follow-up to Counting Opposition Cases, this post presents some charts showing opposition activity over the past 25 years.

08 July 2021

Tracking Expedited Examination

CIPO does not update its trademark .xml data to flag instances in which the examination process is informally expedited.  However the data can be mined to detect such instances, e.g. filing-to-examination in 7 days; filing-to-approval in 17 days; as in the examples below.

05 July 2021

Counting Opposition Cases

How many opposition cases has CIPO dealt with over the years?  The answer depends on the way in which you count oppositions and also depends on what qualifies as an “opposition”.

01 July 2021

The Perils of Popularity

The Chartered Institute of Trade Mark Attorneys has published a brief article titled “The Perils of Popularity” in which I discuss CIPO’s backlog of unexamined trademark applications.  See page 21 of the July/August 2021 issue of CITMA Review (here).

24 June 2021

Status Update 2-Years Post-CIF

This post examines the current status (as of 21 June 2021—CIPO’s most recent data refresh) of the applications CIPO has received since coming into force (CIF) of the 17 June 2019 amendments to the Trademarks Act, RSC 1985 c. T-13 (TMA).

18 June 2021

Doubtful Cases

Section 37(3) of the Trademarks Act, R.S.C., 1985, c. T-13 (TMA) requires the Registrar to notify the owner of a registered trademark of the advertisement of a pending application if the Registrar “is in doubt whether the trademark claimed in the application is registrable” over the registered mark.  The idea is presumably that inter partes opposition proceedings between the registrant and applicant are better suited to resolving such doubt than ex parte examination proceedings.

10 June 2021

Standardization Marks

What do the words Alice, Cinderella, Donald Duck, Dopey, Dumbo, Mickey Mouse, Minnie Mouse, Pluto, Seven Dwarfs and Snow White have in common, besides the fact that they are Disney characters?  Those words are all standardization marks originally protected pursuant to the Unfair Competition Act (1932) 22-23 George V c. 38; RSC 1952 c. 274.  They all remain on the current Canadian trademark register—in the standardization mark category—which may be unfamiliar to some practitioners.

01 June 2021

Some Vienna Statistics

This post takes a brief look at some statistical metrics for CIPO’s Vienna Classifications data.