Tag Archives: registrations

Beware of Nick-of-time Copyright Registrations

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In Canada, copyright registrations comes cheap, very cheap. Nevertheless,.businesses and creators seldom register their rights, at least until they’re faced with a known infringer and want to sue. A recent Federal Court shows us this may not be wisest course of action when it comes to adequately protecting one’s I.P. rights.

The case at issue is that of Patterned Concrete Mississauga Inc. v. Bomanite Toronto Ltd. (2021 CF 314), a case involving a copyright owner faced with copying of some of its business forms, by a competitor called Bomanite Toronto Ltd. Faced with a clear case of copying, the copyright owner sued for infringement and eventually won a judgment awarding $8,000 in statutory damages, for each work that had been copied.

In addition to the plaintiff managing to secure such a judgment through summary proceedings, this case is also a good example of how proper copyright registration may well play a role when attempting to sue for infringement.

Here, even though PCM had done the right thing by obtaining copyrights registration certificates, prior to actually suing, it had done so around the time it first contacted the eventual defendant Bomanite. Under such circumstances, courts will sometimes question the value of the registrations at issue, given that they may have been obtained with the specific purpose of suing a specific infringer, as opposed to being obtained in the normal course of protecting the business’ IP rights, for no particular other reason.

Fortunately for the plaintiff, here the defendant failed to properly argue against existence of the copyrights at issue and/or ownership of those copyrights. Had the defendant done so, the court may have been moved to set aside the registrations, something that may well have resulted in throwing out the whole suit. In the absence of any contradictory evidence, the court allowed the registration certificates to stand.

This recent case serves as a good reminder that creators and businesses may want to revisit their habit of only registering copyrights, once an infringement problem occurs. A much better approach may be to register copyrights (over important works, at least) either as they are created or, at the very least, on a on-going basis, for example by doing a periodic sweep through the business’ most relevant and/or valuable creations, and registering copyrights thereon.

Copyright registration, in Canada, costs next to nothing and can be done through a process that requires minimal resources and information.

CIPO to Try and Accelerate its Processing of Canadian Trademark Applications: About Time!

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This week, CIPO announced several initiatives meant to try and come to grips with the massive backlog that the Trademark Office is facing, along with allowing the fast-tracking of certain applications in the future. With typical delays of 2 to 3 years to obtain a trademark registration in Canada, let’s just say that it’s not a moment too soon.

CIPO made an announcement earlier this week entitled Measures to improve timeliness in examination outlining certain changes to the way examiners process trademark applications.

Essentially, the Trademark Office will now streamline somewhat how it handles applications, including by reducing the content of some of its letters, by processing in priority those applications using the standard list of goods and services (hmm, you think?) and limiting exchanges with applicants and their agents once an argument has been made and rejected.

CIPO also adopted a new Practice Notice this week entitled Requests for expedited examination which creates a new regime for expedited examination in certain cases. Until now, all applications were normally treated the same; This will change. Applicants can now submit a request to expedite their application, along with an affidavit (a statutory declaration) explaining how the applicant qualifies for the fast-tracking of its application.

Before we all start jumping for joy, you should note that such requests for expedited examination are only available in a limited number of situations, namely:

  1. A court action is expected or underway in Canada with respect to the applicant’s trademark in association with the goods or services listed in the application;
  2. The applicant is in the process of combating counterfeit products at the Canadian border with respect to the applicant’s trademark in association with the goods or services listed in the application;
  3. The applicant requires registration of its trademark in order to protect its intellectual property rights from being severely disadvantaged on online marketplaces; or
  4. The applicant requires registration of its trademark in order to preserve its claim to priority within a defined deadline and following a request by a foreign intellectual property office. Note that in such cases, the request will need to be attached to the affidavit or statutory declaration.

Such requests may be submitted, separately from the application itself, either by mail or fax (819-953-2476), by addressing the documents to: “Request for expedited examination, c/o Deputy Director, Examination Division,” etc. Not exactly high-tech stuff, but if it gets the job done, right?

It will be interesting to see how these new rules are handled and used in practice.

So as to end on another positive note, I’ll share an anecdote with you: This week, I received a call from an examiner who elected to call rather than mail me a formal letter and ask us to amend the list of products and services in a pending application. She could just as well have had a letter prepared and sent, but she called instead. As a result, we probably cut 4 to 6 weeks from the processing of this application.