Annual Technical Report 2010 on Trademark Information Activities submitted by Canada (CWS/ATR/TM/2010/CA)
Where URLs are requested below, it is preferred that either URLs which are likely to remain stable over time (three years or more) are provided, or home (main) page URLs are provided with a short explanation of how to access the corresponding information.
I. Evolution of registration activities
Changes experienced in terms of application filings and registrations with respect to the previous year
Trade-mark Filings
Year Residents Non-residents Total % change
2006 19,949 25,082 45,031
2007 21,101 26,657 47,758 6.06
2008 20,045 25,576 45,621 -4.47
2009 18,662 22,294 40,956 -10.23
2010 20,449 24,771 45,220 10.41
New applications received electronically in 2010: 42,391
Trade-mark Registrations
Year Residents Non-residents Total % change
2006 10,599 12,279 22,878
2007 11,583 13,515 25,098 9.70
2008 12,798 14,945 27,743 10.54
2009 10,554 14,125 24,679 -11.04
2010 14,035 15,955 29,990 21.52
Registration requests received electronically in 2010: 5,129
URLs of web pages of the Office’s website that provide statistics related to trademarks
2010-2011 CIPO Client Service Commitments
http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr02484.html
Annual Reports 2010-2011 – Supplementary tables
http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/vwapj/ra09-10Tableaux-ar09-10Table-eng.pdf/$file/ra09-10Tableaux-ar09-10Table-eng.pdf
II. Matters concerning the generation, reproduction, and distribution of secondary sources of trademark information, i.e., trademark gazettes
Publishing, printing, copying techniques
The Trade-marks Journal is available in electronic form on the Canadian Intellectual Property Office (CIPO) web site (www.cipo.ic.gc.ca). The Journal is available in PDF format and can be downloaded (free of charge), viewed and printed with Adobe Reader. The electronic form of the Journal is the official version. All Trade-marks Journals from January 2000 onwards are also available online.
The Journal is currently produced by Marque d’Or, a service provider company. The data is sent electronically once a week to Marque D’Or for publication. CIPO will soon be submitting a request for proposal for the provision of trade-mark support services including a Translation and Journal Formatting Service.
Main types of announcements of the Office in the field of trademark information
Trade-marks Journal
Our weekly Trade-marks Journal contains marks for applications filed, which are advertised following approval, and announcements regarding registrations.
These announcements include:
- the date of the application/registration;
- the serial number of the application/registration;
- the name and address of the owner;
- a reproduction of the trade-mark or necessary information for public inspection;
- a statement of wares and/or services.
Practice Notices
Practice notices pertaining to Office Practices and Policies are available on the Trade-marks home page of the CIPO website under Practice Notices.
Trade-mark News email subscription service
As of January 2010, clients can now register to our new email subscription service to stay in touch with the latest trade-marks developments at CIPO.
Issued by CIPO's Trade-marks Branch (TMB) and Trade-marks Opposition Board (TMOB), these emails will include:
updates to the Wares and Services Manual;
new consultations on trade-marks;
practice notices on trade-marks; and
"What's New" announcements on trade-marks posted on the CIPO website.
When a trade-marks update is posted on the CIPO web site by either TMB or TMOB, it will be emailed to subscribers within 24 hours.
Mass storage media and microforms used
CIPO’s Trade-marks Branch maintains a complete history of its trade-mark files in paper form, and information pertaining to all active marks from 1864 and inactive marks from 1979 to date in electronic form.
Word processing and office automation
The Trade-marks Branch uses MS-Word 2003 as its word processing package operating in a Windows XP Professional environment. Plans are underway to upgrade to MS-Word 2007 and then 2010 and to upgrade to the Windows 7 environment.
Techniques used for the generation of trademark information (printing, recording, photocomposing, etc.)
All outputs of trade-mark information are produced from the trade-mark computer system INTREPID II. Most letters and reports are currently produced using MS-Word (2003) which is integrated within the INTREPID II system. All other outputs are produced using the electronic forms package Accelio Present Central (formerly Jetform and now owned by Adobe) which is also integrated within the INTREPID II system.
While most outputs are printed to paper, the acknowledgement notice and client proof sheet for applications filed electronically (e-services), the trade-mark renewal certificate and trade-mark renewal confirmation notice, the agent renewal notice, and the agent certificate are produced in PDF (Portable Document Format) and sent to the agent/client electronically as email attachments.
The registration notice and certificate are posted on the e-registration service for clients to retrieve. The majority of the letters produced by Accelio Present Central are actually created in PDF for storage and retrieval purposes. Some of the Word documents are also kept for retrieval purposes.
CIPO also provides the trade-mark information to various external search houses in electronic format. The trade-marks and agents information is written to sequential data files (ASCII) before it is sent out to the search houses using an FTP (File Transfer Protocol) software.
URLs of web pages of the Office’s website that provide access to online trademark gazettes and to other sources of trademark information, including download of bulk trademark data
Trade-mark Journal
http://www.ic.gc.ca/cipo/tradejournal.nsf/tmmain-eng?readform
Practice Notices
http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/h_wr00132.html
Trade-mark Newsletter
http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr02989.html#tradeMark
Canadian Trade-marks database – Basic Search
http://www.cipo.ic.gc.ca/app/opic-cipo/trdmrks/srch/bscSrch.do?lang=eng
Canadian Trade-marks database – Advanced Search
http://www.cipo.ic.gc.ca/app/opic-cipo/trdmrks/srch/tmSrch.do?lang=eng
Canadian Wares and Services Manual
http://www.ic.gc.ca/app/opic-cipo/wrs/dsplyPblcSrch.do
III. Matters concerning classifying, reclassifying and indexing of trademark information
Classification and reclassification activities; Classification systems used, e.g., International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification), International Classification of the Figurative Elements of Marks (Vienna Classification), other classification (please indicate whether goods and services for the registration of marks and whether the figurative elements of marks are classified by your Office and, if so, which classification(s) is (are) used)
CIPO does not follow a formal classification system for wares or services. Trade-mark applicants are required to file a statement in ordinary commercial terms of the specific wares and/or services for their trade-mark. However, the wares or services submitted are classified under the NICE classification system for reference purposes.
CIPO uses both a “key word” and the Vienna Classification system as methods of indexing the trade-mark (word elements and figurative elements). The Vienna Codes are available on the Canadian Trade-marks Database on the CIPO web site.
Indexing of trademark information – Word element
Verbal index headings are the key mechanism for the retrieval trade-marks based on their verbal content. Since June 2010, the Trade-Marks Branch has been using a new methodology for the creation of verbal index headings that is aligned with modern electronic retrieval techniques. The objective is to reduce the number of false hits and also to be more transparent in the handling of terms. The changes can be summarized as follows:
the first line of the verbal index heading will contain the original, complete and intact form of the verbal content of a trade-mark
any subsequent lines (if any) would contain obvious equivalent verbal forms to a dictionary word
e.g.
The trade-mark is “c4sh out” .
The first line of the verbal heading would be: c4sh out
The second line would be: cash
Initially only newly formalized trade-marks were indexed using this new methodology. Effective June 16th, 2011, all of the active trade-marks found within the Canadian Trade-marks database will have had their verbal headings reviewed and, if required, modified to the new normalized format. The service was provided by Marque D’Or, a service provider company.
Indexing of trademark information – Design element
While the Trade-marks Branch has been classifying design elements using the Vienna classification, we have also been maintaining a double codification of figurative elements by using a non-standardized classification scheme commonly known in Canada as figurative headings. Also, effective June 16th, 2011, the Branch will cease the practice of using figurative headings.
Throughout 2010, the Trade-marks Branch has performed a full review of all Vienna codes previously assigned to any active trade-mark to ensure that they were being used in a consistent manner. This work, which was completed early 2011 will also introduce certain “Canada specific” extensions to the Vienna classification while maintaining a conformity to the International standard.
In order to help the migration to the use of the Vienna Classification exclusively, the Branch will prepare a document to illustrate how the Vienna classification will be applied and demonstrate the correlation between the previously used figurative headings and the Vienna classification that should be used in its place.
Use of electronic classification systems to check the classification symbols furnished by an applicant and which are contained in the lists of goods and/or services
The wares and services are classified for reference purposes under the NICE classification using an automated classifier. This service is provided by the service provider Marque D’Or.
Obligation for applicants to use pre-defined terms of the classification applied
Trade-mark applicants are not required to use pre-defined terms for their statement of wares and/or services. The Trade-marks Branch suggests that the Canadian Wares and Services Manual published by CIPO and available on our web site, be used as a basis for the selection of terms for the statement of wares and/or services. This manual is in a searchable format.
In June 2009, the Canadian Intellectual Property Office signed a Memorandum of Cooperation with the Trademark Trilateral Partners (United States Patent and Trademarks Office, Japan Patent Office and the Office for the Harmonization of the Internal Market). The Trilateral Partners maintain a list of identifications of goods and services that if entered into an application for the registration of a trade-mark would be accepted by each of those partners.
The assessment of those terms to ensure compliance with Canadian legislative requirements is almost complete and the acceptable terms will soon be added to the Wares and Services Manual. Each identification stemming from this agreement will be identified with the letter T and will appear with its associated Nice Classification.
These identifications (more than 12,000 entries) will provide greater clarity and guidance to trade-mark applicants regarding the acceptability of goods and services in Canada.
Bibliographic data and processing
All bibliographic data contained in trade-mark applications and registrations are maintained on the INTREPID II system.
The Canadian Trade-marks database is available to the public on the Internet via the CIPO web site. This version of the database is comprised of all active and many inactive marks that were either applied for or registered pursuant to the current Trade-marks Act or former trade-mark legislation. The database also includes all trade-marks that were cancelled, expunged, abandoned or refused after 1979, and some marks that were cancelled, expunged, abandoned or refused prior to 1979.
IV. Trademark manual search file establishment and upkeep
Canada no longer maintains a manual search file. All trade-mark information is maintained within the INTREPID II database system and contains over a million marks (1,200,000). This information is provided to various external search services.
V. Activities in the field of computerized trademark search systems
In-house systems (online/offline)
The Trade-marks Branch utilizes an end-to-end trade-mark processing system, INTREPID II, and the system became fully operational in November 1996. INTREPID II operates in a client/server environment. All trade-mark employees have access to the system via an internal, Local Area Network (LAN). The system contains bibliographic trade-mark data dating from the beginning of Canada's trade-mark management system in 1864, including pending and registered trade-marks, trade-mark designs, outgoing correspondence and trade-mark notices. INTREPID II is used within the office to manage the overall trade-mark process, including examination, opposition, assignments and renewals, and is able to make process decisions automatically. The system supports such specific office processes as preparing correspondence, updating information, preparing and transmitting notices electronically.
In July 1999, an electronic trade-mark application filing component was added to allow a client to file their trade-mark application electronically over the Internet. The e-services are continuously expanded; Trade-mark Renewals, the payment of the Registration Fee, submission of a Declaration of Use and request for an Extension of Time to submit a Declaration of Use can be performed electronically over the Internet. The most recent additions are the Trade-marks Opposition Board e-services, introducing to their clients electronic filing of requests for extensions of time and statements of opposition. These e-services were made available July 2010. For all client front-ends, the information is checked for completeness, is transferred to the Branch via the Internet and is automatically loaded into the INTREPID II system where an electronic acknowledgement (in PDF) is emailed back to the client.
Other trade-mark automation initiatives in the area of E-Services being considered are:
Additional electronic bi-directional transactions such as Office initiated correspondence including examiner’s reports, as well as requesting an extension of time to respond to an examiner’s office action etc. will be added over the next 1-2 years. CIPO is also investigating upgrading its existing trade-mark e-services transactions into a standard XML format.
External databases
CIPO uses a Web based search system from Marque D’Or for trade-mark searches. As well, CIPO provides its trade-mark data to other commercial databases for external client use.
Administrative management systems (e.g., register, legal status, statistics and administrative support)
The INTREPID II system is integrated with an improved version of the previous Trade marks Executive Information System (EIS). The EIS system permits detailed and comprehensive tracking and monitoring of trade mark processes. The EIS system provides daily information on production volumes and turn around times for trade mark processes. The EIS system is available via the Intranet to allow broader access to reports within the Office.
Equipment used (hardware, including the types of terminal and network used, and software), carriers used
The INTREPID II system is a client/server system with the client component developed with Team Developer (Gupta SQLWindows 2005 v 4.0.0), and the UNIX (HP-UX) server using ORACLE 10g database. Plans are underway to upgarde to Oracle 11g. Novell file servers are used for electronic mail and for sharing common files during development. A NFS disk area on the main server is used to hold the design images. This allows client workstations to access the designs within the client interface, while storing all design images under the control of the main server.
SERVER
• HP 9000 series model HP RP4410
• Operating System HP-UX 11.23
• 935 GB HardDisk, 8GB RAM
• Oracle RDMS V 10.2.0.3
• Oracle SQL*Net V 9
• Microfocus server express 5.0
• TCP/IP
• Image Converter: Alchemy 1.13
• Electronic Forms Generator: JF Central 5.4.1
CLIENT WORKSTATION
• Over 235 workstations are connected to the server
• Pentium based (min 3.2 GHz, 1GB RAM, 80GB disk)
• SVGA monitors 19”, 21” or 22” LCD
• MS-Windows XP Professional Version 2 Service Pack 3, Word 2003,
• Team Developer (Gupta SQLWindows 2005 v 4.0.0), TCP/IP SQL*Net 9.0
• ViewNow NFS (Network File System)
• Some workstations with Bar-code readers and/or scanners
PRINTERS (networked)
• Lexmark T644 network printers
• NETWORK
• TCP/IP
• 1 gb between server and switches
• 100 mb between switches and workstation
VI. Administration of trademark information products and services available to the public (relating to facilities, e.g., for lodging applications, registering trademarks, assisting clients with search procedures, obtaining official publications and registry extracts)
Planning, administration, automation, security
CIPO has consolidated the public access areas (search rooms) of the various IP products (patents, trade-marks, copyrights, industrial designs, integrated circuit topographies) into a single Client Service Centre. Our Client Service Centre is your central point of contact for general and technical enquiries. This Client Service Centre houses both the manual search collections as well as access to the automated search systems.
Information Officers are available during office hours, Monday to Friday, from 8:30 a.m. to 5:00 p.m. (EST), with the exception of statutory holidays at our Headquarters located in Gatineau, Québec to assist the public in all aspects of their IP requirements.
Collection management, preservation
The trade-mark seach collection is managed in electronic form. The clients have access to the latest versions of the electronic records. A structured backup regime is in place to ensure preservation of the information.
Information services available to the public (including computerized services and search files contained in libraries remote from your Office and trademark information posted by your Office on the World Wide Web)
Public access to the trade-mark electronic processing system (INTREPID II) is available in the Client Service Centre.
The trade-mark database is available to the public on the Internet via the CIPO web site.
The official index that is required to be kept under the supervision of the Registrar of Trade-marks pursuant to subsection 28(1) of the Trade-marks Act, is accessible in the Canadian Trade-marks Database on the CIPO Internet site.
The following trade-mark reference material is also available to the public via the CIPO web site:
• Trade-marks Act and Regulations
• Examination Manual
• Wares/Services Manual
• Practice Notices
• Trade-marks Guide
• Sample Forms
• Other reference materials
• All Trade-marks Journal (in PDF format) as of January 2000
• E-Services
Improved Bilingual Search Capability
In April 2010, we have added a feature to help clients to conduct searches in both English and French. This will help to ensure that their search query includes more terms, thereby resulting in an increased results list. This improvement is of interest to those who know their search criteria in one of Canada's official languages but not in the other.
URLs of web pages of the Office's website for electronic filing of trademark applications
http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/h_wr00021.html#trade-marks
URLs of web pages of the Office’s website that provide information on business procedures such as: filing, publication, examination and registration procedures related to trademarks; opposition and appeal procedures related to trademarks; etc.
http://www.cipo.ic.gc.ca/epic/site/cipointernet-internetopic.nsf/en/h_wr00002e.html
URLs of web pages of the Office’s website that provide a description of information products and services offered by the Office (e.g., trademark search service(s) and trademark databases), as well as information on how to access and utilize them
http://www.cipo.ic.gc.ca/epic/site/cipointernet-internetopic.nsf/en/h_wr00002e.html
VII. Matters concerning mutual exchange of trademark documentation and information
International or regional cooperation in the exchange of trademark information, e.g., in the form of official gazettes
The official Trade-marks Journal is available on-line in PDF (Portable Document Format) http://www.ic.gc.ca/cipo/tradejournal.nsf/tmmain-eng?readform
Exchange of machine-readable information
CIPO is presently providing trade-mark data to a number of external database search providers including weekly updates of Trade-mark data and design images.
VIII. Matters concerning education and training, including technical assistance to developing countries (please indicate URLs of web pages of the Office’s website wherever appropriate)
The Trade-marks Branch participates in the various WIPO/CIPO Executive training workshops.
IX. Other general information related to the Office that is available on the Internet -- URLs of web pages of the Office’s website that:
Canadian trade-mark legislation
http://laws.justice.gc.ca/en/T-13/index.html
http://laws.justice.gc.ca/en/T-13/SOR-96-195/index.html
CIPO Annual Reports 2009-2010
http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/vwapj/ra09-10-ar09-10-eng.pdf/$file/ra09-10-ar09-10-eng.pdf