The College’s Agent Roster as of 31-Dec-2021

This post summarizes the provincial distribution of Canadian patent and trademark agents as of 31-Dec-2021.

Has the Backlog Stabilized?

CIPO’s backlog of unexamined trademark applications appears to have stabilized somewhat.  For the past 7 weeks (i.e. since mid-October 2021) the backlog has hovered at around 180,000 applications although it is still creeping upward.

Registrar-Initiated Section 45 Requests

The previous post discussed non-use expungement proceedings initiated by a third party pursuant to Section 45 of the Trademarks Act R.S.C., 1985, c. T-13 (the TMA).  This post pertains to the initiation of such proceedings by the Registrar on his or her own initiative¹.

Section 45 Expungement Proceedings

Since 1975, the Registrar has issued 12,675 expungement decisions in proceedings seeking summary cancellation (expungement) of registered Canadian trademarks on non-use grounds.  725 such proceedings are actively ongoing as of 22-Nov-2021, according to CIPO’s trademark .xml data.

Section 44 Proceedings

Section 44 of the Trademarks Act R.S.C., 1985, c. T-13 (the TMA) pertains to “...any trademark that was on the register on July 1, 1954...”.

Active Opposition Proceedings

1,461 Canadian trademark opposition proceedings are ongoing as of 08-Nov-2021, according to CIPO’s trademark .xml data.

Extension Applications

This post looks at extension applications, which seek to extend the goods / services coverage of an existing trademark registration pursuant to Section 41(2) of the Trademarks Act (R.S.C., 1985, c. T-13).

The College’s Agent Roster as of 12-Oct-2021

On Monday, 28-June-2021 The College of Patent Agents & Trademark Agents (CPATA or “the College”) took over from CIPO as the regulator of registered (now, “licensed”) Canadian patent and trademark agents.  This post examines the current status of the College’s agent roster—which remains a work in progress.

Application Pendency—How Long?

A reader emailed me to ask “What’s the longest a trademark application can stay pending without being approved or refused by the CIPO?”  The simplistic answer is “theoretically, forever”; but I'll provide some pendency numbers—and some historical observations—in this post.

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.

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.

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.

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.

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.

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.

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.

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.

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.

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”.

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).

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).

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.

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.

Some Vienna Statistics

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

A geographical supranational view of CIPO’s data

This post presents an overview of CIPO’s trademark .xml data from a continental and sub-continental regional standpoint.

Canada’s Madrid Submarines

If you do a “knock-out” search of CIPO’s online trademark database you should beware that a conflicting priority-claiming application for an identical mark could be filed up to six months after the date of your search.  Canada’s accession to the Madrid Protocol presents a new issue: a conflicting priority-claiming Madrid “submarine” application for an identical mark could surface in CIPO’s database over 1½ years after the date of your search!

CIPO’s Top 10 Nice Classes

In a 10 May 2021 email notification, CIPO announced a gradual expansion of its Goods and Services Manual “beginning with the top ten Nice classes filed within the last ten years”.  This post looks at top 10 Nice classes in various ways.

The Coming Agent Shake Out?

With the College of Patent Agents and Trademark Agents expected to become operational soon, it is timely to review some trademark agent appointment statistics.

CIPO Addresses the Backlog

On 3 May 2021 CIPO released 2 Practice Notices to address “current wait times at the examination stage”.  The Notices deal with Requests for expedited examination and Measures to improve timeliness in examination.  Ominously, the measures include the prospect of increased refusals by CIPO.

CIPO’s Top Madrid Users

The Canadian Intellectual Property Office (CIPO) started accepting Madrid Protocol trademark registrations designating Canada less than 2 years ago, but Canada has already become a top destination for such filings.  That’s both good and bad news.

CIPO’s examination backlog—the Madrid effect

A backlog of trademark applications awaiting initial substantive examination by CIPO has developed over the past few years.  Can the backlog be quantified, apart from anecdotal evidence?  Yes it can—by working with CIPO’s trademark .xml data.

Union Labels

Union labels were introduced by An Act to amend the Trade Mark and Design Act (1927) 17 George V c. 71.  Only 14 examples—just 2 of which are currently active—remain in CIPO’s online trademark database and .xml data, this being one of them (see TMDA42786):

General vs. Specific Marks

In An Act respecting Trade Marks and Industrial Designs (1879) 42 Vict. c. 22, Canada required “The proprietor of a trade mark applying for its registration [to] state in [the] application whether the said trade mark...is intended to be used as a general trade mark or as a specific trade mark¹.”  That distinction was dropped from the application requirements set forth² in the Unfair Competition Act (1932) 22-23 George V c. 38 (the successor to 42 Vict. c. 22).  However, the Unfair Competition Act grandfathered the distinction for previously registered marks³ as did the current statute⁴.  The distinction accordingly lives on—well over a century later—in 136 general marks and 1,709 specific marks which are currently active on the Canadian trademarks register (as of 05-Apr-2021).

Working With CIPO’s ‘Delete’ Files

CIPO’s weekly trademark .xml data releases often include a so-called ‘delete’ file in addition to the weekly ‘update’ file(s).  By processing each week’s ‘delete’ file one can easily stay in sync with CIPO’s online trademark database.  In contrast, it is more cumbersome to stay in sync with CIPO’s online patent database.

Where are the Agents?

CIPO’s online trademark database does not expose trademark agent details as searchable fields.  To investigate such details one must use CIPO’s .xml data, as I will demonstrate in this post.

Nurses!? What about Kinsmen / Canadian Clubs?

CIPO’s “Mark Protected by Federal Act of Incorporation” category

The Help file associated with the Canadian Intellectual Property Office’s online trademark database contains a section headed The various categories of marks.  One such category (as of 22-Mar-2021) is Mark Protected by Federal Act of Incorporation as shown in the Help file extract below:

The reference to an Act to Incorporate the Canadian Nurses Association appears to be an anachronism that should be removed from the Help file.

Accelerated (expedited) Search and Examination

In its 14-Dec-2020 “Requests for expedited examination” Practice Notice CIPO explains that it “...does not currently grant requests to examine trademark applications out of order”.  The Notice then outlines an exception for “...applications associated with medical goods or services related to COVID-19”.  Does the data tell us anything about expedited examination?

NIDS objections—does the data help?

If you inspect any of CIPO’s 1.7 million trademark .xml files—even for a mark initially protected under the Trade Mark and Design Act (1868) 31 Vict., c. 55 or under the Unfair Competition Act (1932) 22-23 Geo. V, c. 38—you will discover that the file contains a tmk:TradeDistinctivenessIndicator element encapsulating either the word “true” or the word “false”.

How current is the data?

If you work with CIPO’s trademark .xml data—or with CIPO’s online trademark database—you may encounter situations in which you need to know the exact date of the most recent event details represented in the data—or in the online database.

Montreal or Montréal? ETL and data cleansing

If you click the Agent Rankings By City tab at the top of this page, then scroll down, you will find not one but four separate tabulations for: Montreal, Québec; Montreal, Quebec; Montréal, Quebec; and Montréal, Québec.  Why isn’t there just one tabulation combining those four city / province combinations as shown below (click to enlarge the image)?

Prosecution Events

Users of CIPO’s online trademark database will be familiar with the Action History that appears upon inspection of any “hit” returned by searching the database.  You can’t search Action History events via the online database, but you can do powerful event-based searches by working with the .xml data.

Mark Categories & Classes (the tmk:MarkCategory and catmk:TrademarkClass elements)

CIPO exposes only a limited number of categories and classes of marks via the online trademark database.  You can uncover many more by working with the .xml data.

Update your file numbers with CIPO (the com:ApplicantFileReference XML element)

Each one of CIPO’s trademark .xml files contains a lot of detail—including your file reference numbers.

What about patent data?

You may be wondering if CIPO has any patent data that could be analyzed in similar fashion to the trademark data analysis examples you can see by clicking the tabs along the top of this page.  The answer is yes, but no.

Section 9 Marks

In this blog’s introductory post I mentioned that although you can’t restrict a search of CIPO’s online trademark database to retrieve only certain types of Section 9 marks, you can do exactly that if you're working with CIPO’s trademark XML data.

Working with trademark XML data (XML shredding)

The previous post began by surmising that you have downloaded one of CIPO’s global or weekly .zip files and unzipped it into a separate folder, yielding ten to twenty thousand .xml files.  So now you’re set to do some sophisticated data analysis—right?

Viewing trademark XML data

OK—you have downloaded one of CIPO’s global or weekly .zip files and unzipped it into a separate folder.  That folder will typically contain ten to twenty thousand files.  Most of them will be .xml files, but there will also be quite a few .png files (containing design mark images) and possibly some .mp3 or .mp4 files (containing sounds & moving images).  We’ll ignore the .png, .mp3 & .mp4 files—but now what?

The Data

Approximately semi-annually (pre-pandemic) CIPO publishes a “global” release of almost 2 million XML files—one file for each & every Canadian trademark (excluding certain marks that were cancelled or expunged before 1979 or applications that were abandoned or refused before 1980).

Introduction

Each week the Canadian Intellectual Property Office (CIPO) releases thousands of XML files containing detailed information about Canadian trademarks—one file per trademark.  If a new trademark application is filed, CIPO publishes a new XML file for that application.  If a step is taken—either by the trademark owner or by CIPO—in relation to an existing trademark application or registration, CIPO republishes the XML file for that application/registration to reflect that step.