Archived — Canadian Trademarks Database Index Headings and Vienna Classification

published April 28, 2010

effective June 7 2010

• Canadian trademarks database and verbal index headings.
• Canadian trademarks database and the Vienna classification.
  (amended June 3rd 2010)
• Characters and the Canadian trademarks database.
  (amended June 10, 2010)

---

Canadian trademarks database and verbal index headings

This is to inform you that Canadian Intellectual Property Office (CIPO) is in the process of normalizing the verbal index headings.

Verbal index headings are the key mechanism for the retrieval trademarks 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.

Starting June 7^th 2010, CIPO 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 trademark
• any subsequent lines (if any) would contain obvious equivalent verbal forms to a dictionary word

e.g.

• The trademark is "c4sh out".
• The first line of the verbal heading would be: c4sh out
• The second line would be: cash

Initially only newly formalized trademarks will be indexed using this new methodology; however by the end of 2010 all of the active trademarks found within the Canadian trademark database will have had their verbal headings reviewed and, if required, modified to the new normalized format.

Canadian trademarks database and the Vienna classification

(amended June 3rd 2010)

Since March 3, 2003, CIPO has been using the Vienna Classification to classify the figurative elements of a trademark. The Vienna Classification is based on the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks. This multilateral treaty, administered by the World Intellectual Property Organization (WIPO), entered into force in 1985 and has become de facto the international standard for the classification of design elements. While CIPO has been classifying design elements by 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. Commencing in December, 2010, CIPO will cease the practice of using figurative headings.

In addition, throughout 2010 CIPO will perform a full review of all Vienna codes previously assigned to any active trademark 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, CIPO 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.

Characters and the Canadian trademarks database

(amended June 10, 2010)

The Trademarks Office (the Office) would like to inform all interested parties of its practice regarding characters, punctuation and symbols in trademarks.

The Office does not consider marks to be depicted in a special form, if they consist of a word or words and are comprised of French accents or of one of the following characters, punctuation or symbol:

Additionally, the Office will not consider marks to be depicted in a special form, only because they consist of a word or words composed of upper and lower case letters.

However if, according to the applicant, a trademark comprised of any other character, or wherein the font or in certain cases the color is a feature of the mark, the mark will be considered to be depicted in special form and a drawing be required.