What is real
is not external form.



CONSTANTIN BRANCUSI

Trademarks registration in Canada

28.02.2019


Since last November, we are handling the case of a chocolate and sweets Swiss manufacturer who wants to register two brands in Canada in order to enter and sell its’ company products on the local market.

Following the filing of the trademark applications, we have been notified by the Canadian Intellectual Property Office (CIPO) that certain changes should be made to successfully register the trademarks. By doing so the customer would receive a green light, and the trademarks would be admitted to Canada.

What changes were suggested by CIPO?

The examiners of the institution proposed some solutions to the following issues: color, meaning, description of goods and services and brand character. We have been asked to state whether the mark is colored or not, to translate the term of the trademark, to remove a specific phrase from the description of the goods and services listed in classes 30, 35, 43and to specify the character of the mark, two-dimensional or three-dimensional.

How did we respond to CIPO requests?

For each of the two documents we received from the CIPO examiners, we prepared and sent arguments covering each item individually. As far as the color of the mark is concerned, we have specified its design protection is intended only for the black and white version and not also for the colored one. The wording issue was resolved by accepting the removal of the phrase “all of the above-mentioned origin from Switzerland” from the list of goods, and concerning the translation, we have argued that the trademark can’t be translated since the term has no meaning in German.

Since last November, we are handling the case of a chocolate and sweets Swiss manufacturer who wants to register two brands in Canada in order to enter and sell its’ company products on the local market.

Following the filing of the trademark applications, we have been notified by the Canadian Intellectual Property Office (CIPO) that certain changes should be made to successfully register the trademarks. By doing so the customer would receive a green light, and the trademarks would be admitted to Canada.

What changes were suggested by CIPO?

The examiners of the institution proposed some solutions to the following issues: color, meaning, description of goods and services and brand character. We have been asked to state whether the mark is colored or not, to translate the term of the trademark, to remove a specific phrase from the description of the goods and services listed in classes 30, 35, 43and to specify the character of the mark, two-dimensional or three-dimensional.

How did we respond to CIPO requests?

For each of the two documents we received from the CIPO examiners, we prepared and sent arguments covering each item individually. As far as the color of the mark is concerned, we have specified its design protection is intended only for the black and white version and not also for the colored one. The wording issue was resolved by accepting the removal of the phrase “all of the above-mentioned origin from Switzerland” from the list of goods, and concerning the translation, we have argued that the trademark can’t be translated since the term has no meaning in German.

 

08.05.2019

New case at horizon: generic trademark or not?-

In the coming months we will have a case related to a supposed generic name of a Swiss traditional bread producer’s brand. The problem lies in the refusal of the German office to register that trademark based on the fact that the name of the trademarks is generic. We consider this refusal difficult to understand, ( learn more )

24.04.2019

Slogans can sometimes be an issue

Surely, the word slogan has a meaning for everyone. You may have heard it many times used in association with different trademarks. Companies often use brand slogans to help their trademark accomplish long term strategic goals. They also help the company stand out in the market and gain a certain positioning desired by the company. ( learn more )

16.04.2019

Rebrand for a Romanian bank

Currently, in Romania, we provide consultancy to a reputable banking company in a rebranding process. The goal is to achieve increase its popularity among customers. As part of a company’s marketing strategy, the rebranding process can be very complex and long lasting. It requires a lot of research and its deployment involves many resources, hence ( learn more )