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.

 

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What can you do when another business wants to use your trademark

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