CIPO’s trademark data release for the week ended 10-Oct-2022 contained 129,660 .xml files
1. Many of those files updated marks that have been inactive for decades. Why update an inactive mark?
The answer is to record an agent’s change of name, change of address, or both. One might think that such changes would only affect currently active marks, but that isn’t the case.
The
Trademark Agent Registration Numbers post discussed how those numbers serve as pointers which CIPO can use to manage thousands—in some cases many tens of thousands—of marks for which a particular firm (or a particular office of a firm) is appointed as agent.
CIPO can easily implement an agent name or address change via a database update query such as “change the agent’s name to [
the agent’s new name] for every mark for which the agent’s registration number is 1234”. That happened effective 10-Oct-2022: over 80% of the aforementioned 129,660 .xml files reflect the Smart & Biggar firm’s change in operation, as of about 7-Oct-2022, to form part of the IPH Limited group, under the name Smart & Biggar LP
2.
For example, 99,972 of the aforementioned 129,660 .xml files were updated by changing the agent's name to Smart & Biggar LP as summarized in the table below. Note that the table pertains only to marks for which Smart & Biggar LP is now the agent of record. About another 5,000 .xml files were updated to reflect Smart & Biggar LP as agent in various opposition and cancellation matters, again including inactive matters.
As one example,
TMDA56830 was expunged in 1955 but CIPO’s 10-Oct-2022 trademark data release changed the agent’s name for that mark anyway, from Smart & Biggar LLP to Smart & Biggar LP. If you examine CIPO’s online trademark database entry for TMDA56830 you won’t see anything in the Action History to indicate that the agent’s name changed. Changes of
agent are noted in the Action History, but agent
name or
address changes are not
3.
To verify that the agent’s name changed, we can compare the 10-Oct-2022 version of CIPO’s .xml file for TMDA56830 with the most recent prior version of the same file. In this case, the most recent prior version of the file is in CIPO’s October 2019 global refresh. The left side of the image below (click to enlarge the image) is the <tmk:NationalRepresentative> (i.e. agent) element from the 2019 global version of the .xml file for TMDA56830. The right side of the image shows the same element from the updated TMDA56830 .xml file in CIPO’s 10-Oct-2022 trademark data release. Comparison reveals that the agent’s name changed from Smart & Biggar LLP to Smart & Biggar LP. The latter (i.e. current) agent name appears in the online database record for TMDA56830, but the Action History doesn’t reflect the change.
Why update an agent’s name for a mark that was expunged 67 years ago? Possibly because it is easier to do an across-the-board update of an agent’s entire mark portfolio than to selectively update only those marks which are currently active. Furthermore, an inactive mark may in some cases be returned to active status, e.g. if a refusal is subsequently overcome or if a mark is determined to have been erroneously inactivated; the agent’s name would be incorrect in such cases unless the new name had been applied to both active and inactive marks. Another possible reason is to avoid potential confusion if different names are displayed for the same agent
1 The release also contained 34,936 .png file design mark images and 10 .mp3 file sound mark sounds. In a typical week CIPO releases about 20,000 new or updated trademark .xml files, so the massive 10-Oct-2022 release caught my attention.↩
2 As explained in the expandable Our Structure section of https://www.smartbiggar.ca/who-we-are “Smart & Biggar LP is a limited partnership formed under the laws of the Province of Quebec, which carries on the business of a patent and trademark agency and provides all related and other services that are not legal services provided by either Smart & Biggar LLP or Smart & Biggar Alberta LLP”.↩
3 Mark owner address changes appear in the Action History as “Amendment To Application” (or “Amendment To Registration”) Action items, with Comments such as “Address/address” or “Owner Address Change / Voir Preuve au dossier/See evidence on File No. nnn”. This is despite inclusion of a specific “Owner Address Changed” item in CIPO’s Data Dictionary. That item appears only once in the online database: see the 2010-03-22 Action History item for TMA246509. In contrast, address changes for Section 9 mark owners (so-called “requesting parties”) appear regularly in the Action History via a Data Dictionary “Requesting Party Address Changed” item. See for example the 2022-03-03 Action History items in official marks 903595, 903596, 903597, 903598, 903599 & 903600.↩
