Canada ‘courtesy letter’ for international registrations

29th Oct 2019

Our members may have received a ‘courtesy letter’ from the Canadian Intellectual Property Office (CIPO) if filing an international trade mark via The World Intellectual Property Organisation (WIPO).

The letters are sent to the representative informing them that correspondence will be conducted with the holder or applicant themselves.

We have discussed this issue with the UK’s Intellectual Property Office (UK IPO), which in turn has spoken to WIPO. The discussion points are quoted below.

Canada’s view of the procedure is: “that when prosecuting the application, it only has the legal authority to correspond with the holder/applicant or their Canadian agent.

“The reason it is able to send the courtesy notice to the foreign WIPO representative is that it does not relate to the actual content of the application (in other words it’s just a general notice).

“The provisional refusal will always be sent to WIPO (and a courtesy copy will be sent to the applicant, or a Canadian agent if appointed). WIPO will forward this to the WIPO representative (as usual) – he/she will then know the status and they must appoint a local attorney to respond to the provisional refusal. 

“If the applicant or local agent responds to the provisional refusal and the objections are not overcome, the Office will send out an additional report, however, this will not be sent to the IB.  It will only be sent to the holder/local representative handling the refusal.

“If the application is approved, the Canadian Office will issue an “approval notice” that states that the application will be published for the purpose of opposition. This is not a legal document but the equivalent of an interim or status report. 

“However, if the trade mark is opposed, the provisional refusal based on opposition will be sent to WIPO.

“If not opposed, the statement of grant of protection will be sent to WIPO with a copy of the registration certificate - so WIPO will send that information on to the WIPO representative.

“The Office will also send a courtesy copy of the certificate of registration to the holder or their Canadian agent if one has been appointed.

“If the trade mark is not approved but rather is refused (after the opposition or initial refusal has been responded to), the ultimate refusal letter will be sent to the applicant or their Canadian agent and only once the appeal period has lapsed and the trade mark is truly refused, will the Office send a confirmation of total provision refusal to WIPO.”