With Halloween almost upon us it is timely to consider ghosts; specifically, ghost writers.As of 24 October 2022, CIPO has received 70,541 inbound Madrid filings1. The current status of those filings is tabulated below:
A CIPO examiner’s report raising one or more objections (or an opposition) to a Madrid application is termed a “Total Provisional Refusal”. CIPO has issued 31,832 Total Provisional Refusal reports as of 24 October 2022. CIPO sends the first such report to WIPO and copies the applicant or the applicant’s Canadian trademark agent—if an agent has been appointed.
Additional Total Provisional Refusal reports are issued by CIPO if a response to the previous report fails to overcome all outstanding objections. Additional reports are sent only to the applicant or to the applicant’s Canadian trademark agent—if one is appointed.
As of 24 October 2022, 447 inbound Madrid applications have each received 2 or more Total Provisional Refusals2. It follows that responses were filed to the first (and in some cases second) refusals of those applications. According to CIPO’s data, no Canadian trademark agent has been appointed for 165 of those 447 applications (37%). Conceivably, some “no agent” Madrid applications involve in-house trademark agents who are not of record with CIPO. However that is unlikely to apply to all such applications. One accordingly wonders if responses are being ghost-written for direct CIPO filing by applicants in respect of refused “no agent” Madrid applications.
The aforementioned 165 “no agent” cases each received 2 or more Total Provisional Refusals. What about “no agent” cases that received only 1 Total Provisional Refusal to which a response was filed? Neither CIPO’s online trademark database not its trademark .xml data include details of responses filed by applicants or their agents. Accordingly, one cannot query the data to count responses to Total Provisional Refusals. An alternative is to count “no agent” cases which received at least one Total Provisional Refusal and for which the current status is Approved, Advertised, Opposed, Registration Pending, Registered or Expunged3.
As of 24 October 2022, 472 “no agent” Madrid applications have received at least one Total Provisional Refusal and are Approved, Advertised, Opposed, Registration Pending, Registered or Expunged. That number (i.e. 472) is almost certainly less that the total number of “no agent” responses to Total Provisional Refusals because it omits cases that have not reached the approval stage. It is impossible to obtain an exact count of the total number of “no agent” responses to Total Provisional Refusals since CIPO’s data does not include details of responses filed by applicants or their agents.
The issue appears to be independent of applicant country. For example, the 472 “no agent” cases break down as follows by applicant country for the top 10 countries:
Canada’s College of Patent Agents and Trademark Agents recently drew attention to a related issue in an ethical analysis / advice Third Party Proposal to Aid in Unauthorized Practice post. According to the College, a third party may have approached licensed Canadian trademark agents with a request to “borrow” or “rent” the agent’s licence to file and prosecute trademark applications on behalf of the third party’s clients. The College cautions that licensees should not engage in any practice or enter into a practice arrangement where they are appointed as the agent before CIPO but otherwise have nothing to do with an application or prosecution.
1 CIPO began accepting inbound Madrid registrations on 17 June 2019 upon coming into force (CIF) of extensive amendments to the Trademarks Act, RSC 1985 c. T-13 (TMA).↩
2 Six applications have each received 3 Total Provisional Refusals as of 24 October 2022. See application nos. 1983661, 2002139, 2004133, 2029489, 2038679 and 2082072. ↩
3 A response would typically be required to overcome the Total Provisional Refusal and advance the case to the approval, advertisement, opposition or registration stage.↩
