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Annual Technical Report 2009 on Trademark Information Activities submitted by Canada (CWS/ATR/TM/2009/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

2005 18,777 23,055 41,832
2006 19,949 25,082 45,031 7.65
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

Trade-mark Registrations

Year Residents Non-residents Total % change

2005 12,717 14,009 26,726
2006 10,599 12,279 22,878 -14.40
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

New applications received electronically in 2009: 37,841

Registration requests received electronically in 2009: 5,609

II. Matters concerning the generation, reproduction, and distribution of secondary sources of trademark information, i.e., trademark gazettes

Publishing, printing, copying techniques

The weekly Trade-Marks Journal (gazette) is published by a service provider company Marque D’Or. The data for the weekly publication is sent electronically once a week to Marque D’Or.

The weekly Trade-marks Journal is available on-line via our CIPO Web Site at http://www.cipo.ic.gc.ca in PDF (portable document format). All Trade-marks Journals from January 2000 onwards are available on-line.

Main types of announcements of the Office in the field of trademark information

The weekly Trade-marks Journal (gazette) 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.

The weekly Trade-marks Journal also contains notices on information pertaining to the Trade-marks Office.

Notices pertaining to Office Practices and Policies are no longer published in the Trade-marks Journal. These notices are only available on the Trade-marks home page of the CIPO website under Practice Notices.

Mass storage media and microforms used

The Trade-marks Office 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 Office uses MS-Word 2003 as its word processing package operating in a Windows XP Professional 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 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 attachements. The registration page and registration 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 purpose. Some of the Word documents are also kept for retrieval purpose. 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

http://napoleon.ic.gc.ca/cipo/tradejournal.nsf/$$ViewTemplate+for+TMJournal+English?OpenForm

http://www.cipo.ic.gc.ca/epic/site/cipointernet-internetopic.nsf/en/h_wr00132e.html?OpenDocument

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)

Canada 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. While Canada does not follow a formal classification system, the wares or services are classified under the NICE classification system for reference purposes.

Canada 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

The Trade-marks Office is in the process of normalizing the verbal index headings.

Verbal index headings are the key mechanism for the retrieval trade-marks based on their verbal content. They were initially developed to meet card catalogue retrieval requirements. Obviously times have changed however there has never been a formal update to the manner in which verbal indexes are attributed.

Effective June 7th 2010, TM will use 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 will be indexed using this new methodology; however by the end of 2010 all of the active trade-marks found within the Canadian trade-mark database will have had their verbal headings reviewed and, if required, modified to the new normalized format. The service is provided by the service provider Marque D’Or.

While the Trade-marks Office 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. Effective June 7th, 2010, TMO will cease the practice of using figurative headings.

In addition, throughout 2010 TMO will perform a full review of all Vienna codes previously assigned to any active trade-mark to ensure that they are used in a consistent manner. This work, which should be completed by year-end 2010 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, TMO 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 Office suggests that the Canadian Wares and Services Manual published by the Canadian Trade-marks Office, 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 now in a searchable format.

Bibliographic data and processing

All bibliographic data contained in trade-mark applications and registrations are maintained on the INTREPID II system.

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 (1,155,511). 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 Office 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 can be performed electronically over the Internet. The most recent addition, 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. For all client front-ends, the information is checked for completeness, the information is transferred to the Office via the Internet, the information is automatically loaded into the INTREPID II system and 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.

The Trade-marks Opposition Board is also introducing e-services for their clients. These e-services should be made available by July 2010.

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 Gupta SQLWindows 2005 v 4.0.0, and the UNIX (HP-UX) server using ORACLE 10g database. 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,
• 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. This Client Service Centre houses both the manual search collections as well as access to the automated search systems. The Client Service Centre is available to the public during normal office hours, 8:00-16:45 at its Headquarters located in Gatineau, Québec.

Information Officers are available in the Client Service Centre 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 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

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.

URLs of web pages of the Office's website for electronic filing of trademark applications

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 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.cipo.ic.gc.ca.

Exchange of machine-readable information

CIPO is presently providing trade-mark data to a number of licenced external database search providers.

Weekly updates of Trade-mark data and design images are provided to the licenced external database search providers.

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)

Trade-marks 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:

provide information on legislation related to trademarks

http://laws.justice.gc.ca/en/T-13/index.html
http://laws.justice.gc.ca/en/T-13/SOR-96-195/index.html

contain the Annual Report of the Office

http://www.cipo.ic.gc.ca/epic/site/cipointernet-internetopic.nsf/en/h_wr00026e.html

X. Other relevant matters