Written by Ashley Moniz
On January 17, 2020, the Canadian Intellectual Property Office (CIPO) published a Practice Notice limiting an applicant's time to respond to an examiner's office action or to request for a classification of goods and services.
As before, applicants must respond within six months from the issuance of an office action. Where an applicant could previously receive one six-month extension, this extension is no longer available unless the applicant can prove that exceptional circumstances exist which have prevented the applicant from responding within the initial six-month term. If the applicant neither meets the deadline nor secures an extension, the application will be considered in default.
When a request for clarification is issued, the applicant also has six months to respond. However, if CIPO does not receive a response within six months, they will issue a notice of default providing an additional two months to respond. As above, CIPO will only grant a further six-month extension under exceptional circumstances. This process also differs because, as this is a statutory deadline, the extension request is subject to a $125 fee.
CIPO has included a non-exhaustive list of events which constitute an "exceptional circumstance". Among these exceptions are circumstances beyond the applicant's control, associated proceedings related to the mark, and additional time needed to gather evidence in response to a substantive objection to the mark's registrability. You can read the full list of objections in the CIPO Practice Notice here.
For more information on registering and protecting your trademark, contact us.
Written by: Savannah Traynor
Online retailer Backcountry.com has been facing outrage from the outdoor community after an aggressive trademark enforcement campaign.
The Colorado-based retailer, which sells outdoor clothing and recreation gear online, has been enforcing its rights to the word BACKCOUNTRY. This includes suing small businesses such as Backcountry Denim, Backcountry eBikes, Snapperhead Inventions LLC for its Marquette Backcountry Ski, and avalanche safety course Backcountry Babes.
Most of the suits have been settled in court, which has led to very costly rebranding for Backcountry Denim (now BDCo) and Backcountry eBikes (now Bakcou).
After news broke of the retail giant suing small local retailers for infringement, the outdoor community was incensed. A Facebook group titled "Boycott BackcountryDOTcom" was created. Hashtags such as #boycottbackcountry started up on Twitter.
Community members argue that trademarking backcountry is like trademarking “camping” or “mountains.”
Backcountry.com responded to the heat in an open letter on their website. Jonathan Nielsen, Backcountry.com's CEO, writes: "In an attempt to protect the brand we have been building for nearly 25 years, we took certain actions that we now recognize were not consistent with our values, and we truly apologize."
Although Backcountry.com was completely within its rights to enforce its trademark, the backlash has been significant. This is likely due to the fact that Backcountry.com was seen as a company geared towards “real people who are blending the outdoors with the everyday,” and the litigation was seen as contrary to their values.
For assistance on navigating trademark enforcement, please contact us.
There are two applications filed, "Breakfast Burrito" and "Breakfast Burritos," both covering "Breakfast burritos; Burritos." The marks are clearly descriptive, not to mention the fact that the southwestern dish has been marketed and sold in restaurants for decades, including fast food giants such as McDonald's.
Suffice to say, the applicant might face objections upon examination.
For more information on what you can trademark and how, contact us.
Written by Paula Clancy.
The Federal Government amended the Cannabis Act and enacted new regulations to permit the sale of cannabis edibles in Canada, i.e. food or drink items made with cannabis oil.
As of today a host of edible cannabis products are available for legal sale to consumers in Ontario. Cannabis edibles are allowed to have up to 10 milligrams of THC (tetrahydrocannabinol) in a single package and up to 30 milligrams of caffeine, if it is naturally occurring (for example, in chocolate, coffee and tea). However, edible cannabis products may not contain nicotine or added alcohol. The Government has published the following guidelines outlining what industry needs to know about cannabis. See link here.
There are strict limitations on how cannabis products may be packaged and labelled, as well as how they may be promoted. To ensure you do not go off-side, please contact us.