DEUTSCHE POST WORLD NET — 1054182

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Application number

1054182

Registration number

TMA828619

Type(s)

Word

Category

Trademark

CIPO status

REGISTERED

TM5 status

LIVE/REGISTRATION/Issued and Active
The trademark application has been registered with the Office.

Filed

2000-04-06

Registered

2012-07-26

Registration Expiry Date

2027-07-26

Registrant

Deutsche Post AG,
Heinrich-von-Stephan-Strasse 1,
53175 Bonn,
GERMANY

Agent

RIDOUT & MAYBEE LLP
250 University Avenue
5th Floor
Toronto
ONTARIO M5H3E5

OPPONENT (CASE CLOSED)

Canada Post Corporation
2701 Riverside Drive,
Suite N1110,
Ottawa,
ONTARIO K1A0B1

Agent

SMART & BIGGAR LLP
SUITE 900, 55 METCALFE STREET
P.O. BOX 2999, STATION D
OTTAWA
ONTARIO K1P5Y6

Disclaimer text

The right to the exclusive use of the words POST, NET and WORLD is disclaimed apart from the trademark.


Index headings

  • DEUTSCHE POST WORLD NET

Goods

  • (1) Apparatus for processing of sound, images or data namely, DVD recorders, CD recorders, video recorders, audio tape recorders, television; blank and pre-recorded magnetic discs and tapes all for the storage and transmission of data in the field of handling, processing, sorting and tracking goods and parts for all of the aforesaid goods, records; automatic vending machines; cash registers, calculating machines, data processing equipment and computers; automobiles, bicycles, motorcycles, airplanes, buses, ferries, ships and parts thereof; alarm clocks; alloys of precious metals; amulets; anchors; ash trays of precious metals for smokers; boxes of precious metal; bracelets; brooches; chains of precious metals, charms, chronographs and chronometers, clock and watch escapements, watch bands, casing and cases, precious stones, pearls; jewellery, watches and (alarm) clocks; paper and cardboard articles, namely, boxes, dividers for boxes, tubes; filing trays; printed matter, namely, special handling forms, pricing lists, instruction sheets; printed tickets, collection books, office requisites, namely, blank address books, blank address cards and card files, writing paper; special handling orders; maps; blank paper and paper cards for the recordal of computer programs and data; brochures and manuals; typing paper, copy paper, carbon paper, computer paper, paper and cardboard products, namely, gift wrapping paper, gift boxes, note paper, printed matter in the form of pamphlets, brochures, newspaper, booklets, informational flyers, magazine inserts, news letter, journals, magazines, posters and calendars; mounted and unmounted photographs; artists' materials, namely drawing paper, pens, pencils, brushes, paint pallettes, easels, paint stirrers and paddles, paint trays; painting pallettes, paint stirrers and paddles and paint applicators; office requisites (excluding furniture), namely, hole punches, rubber bands, staplers, staple removers; flash cards; posters, bulletin boards and chalk boards; photograph albums; announcement cards, appointment books, note cards, credit cards, index cards, paper party decorations, desk top planners, desk sets, desk pads, desk top organizers, addressing machines, agendas, plastic or paper bags for merchandise packaging, paper banners, dictionaries, printed emblems, file folders, paper flags, flash cards, folders, printed invitations, memorandum boards, memorandum books, organizers for stationery use, stamp pads, paper table cloths, pen boxes, crossword puzzles, telephone number books, travel books; bookbinding material, namely, cloth for bookbinding, bookbinding tape, bookbinding wire; photographs; adhesives for stationery or household purposes; paint brushes; typewriters; printers' type; printing blocks; clothing, namely, underwear, briefs, boxer shorts, and underpants, bras, corsets, hosiery, stockings, pantyhose, knee highs, socks, slips, petticoats, sports jackets, vests, jackets, coats, rain coats, overcoats, anoraks, waist coats, capes, cloaks, nightshirts; pyjamas, dressing gowns, bath robes, pullovers, cardigans, jerseys, jumpers, track suits, pants, trousers, slacks, leggings, sweaters, sweat pants, jackets, blouses, bodysuits, dresses, skirts, tank tops, crop tops, shorts, jeans, suits, bathing suits, bathing trunks, bikinis, beachwear, ski bibs, ski pants, ski suits, ski wear, tennis wear, golf clothes; neckties, bowties, foulards, kerchiefs, belts, scarves, mittens, gloves, ski boot bags, ski gloves; neckbands, wrist bands, beachwear, bermuda shorts, hats, caps, sweat bands, sun-visors, berets and hoods; shoes, sandals, slippers, boots, ski boots, after-ski boots, snow board boots, golf shoes, sneakers and tennis shoes, to the extent use of the trade-mark in association with theforgoing wares wouldnot: (a) be contrary to Sections 57, 58 and 61 of the Canada post Corporation Act, R.S.C. 1985, c. C-10 (the "CPC Act"); (b) consttute collecting, transmitting and delevering letters to the address thereof within Canada as cntemplated by section 14 odf the CPC Act' and/or (c) contitute any of the activities contemplated by section 19 of the CPC act including but not limited to regulating the standards with respect to the conditions under which mailable matter may be transmitted in Canada and in respect of providing the operation of any services or systems established pursuant to the CPC Act.

Services

  • (1) Promoting the goods and services of others by arranging for sponsors; providing business information regarding business transactions, orders, bills and invoices, transfer and description of business goods via the global computer network; bookkeeping for electronic funds transfer; business consultation and advice in the field of trade and foreign trade information services conducted via the global computer network; business consulting services for commercial businesses, namely, commercial information agencies; bookkeeping, business organizational consultation; business research and surveys, computerized accounting services, business management, namely, accounting services; business management, namely, secretarial services; business management, namely, dictation services; marketing communications, namely, press liaison, public relations, for others; financing services; consulting services in the field of banking; telecommunications air time brokerage services; transport insurance; business brokerage, customs brokerage, insurance and investment brokerage, real estate brokerage, financial analysis and consultation, financial management and planning, apartment house management, rental of apartments, financial research, fiscal assessment and evaluation; insurance; provision of online access, namely, the leasing of computer software and hardware for construction of a tree-type address and name directory functioning as a directory service; financial information; issuance of securities, commercial lending services, financial portfolio management, discount services, brokerage of shares of assets and business ventures, brokerage of fund shares, securities consulting and safekeeping, appraisal of collector's stamps; brokerage of productive investment in funds; real estate affairs, namely brokerage, management, leasing, appraisal of real property; consultancy services relating to insurance affairs namely, information and brokerage of insurances; financial evaluating (insurance, banking, real estate), apartment house management, housing agents, leasing of real estate, real estate agencies, real estate appraisal, real estate brokers, real estate management, rental of offices (real estate), renting of apartments, renting of flats; fiscal assessments; acceptance of deposits (including substitute bond issuance); acceptance of fixed interval installment deposits, loans; discount of bills (notes), domestic remittance, liability guarantee; acceptance of bills, lending securities, acquisition/transfer of monetary claims, safe deposit for valuables including securities/precious metals (safe deposit services), money exchange, trusteeship of money futures contracts, trusteeship of money/securities/monetary claims/personal property/land/land fixture surface rights/land leasing rights, trusteeship of bond subscriptions, foreign exchange transactions; brokerage for installment; securities trading; transactions of securities index futures/securities options/overseas market securities future, agencies for brokerage for securities trading and for transactions on commission of securities index futures/securities options/overseas market securities futures; agencies for brokerage of securities trading in overseas securities markets and of transactions on commission of overseas market securities futures, underwriting securities, selling securities, handling subscriptions and offerings of securities, providing stock market information; trusteeship of commodity futures transactions; life insurance brokerage, life insurance underwriting, agencies for non-life insurance claim adjustment for non-life insurance, non-life insurance underwriting, insurance actuarial services; providing financial information, providing stock/securities market information; credit card services, building management, agencies or brokerage for renting of buildings, building leasing, purchase/sales of building, agencies or brokerage for purchases/sales of buildings, appraisal/evaluation of buildings/land, land management, agencies or brokerage for renting land, land leasing, purchase/sale of land, agencies or brokerage for purchase/sale of land; building/land information supply; customs brokerage for third parties, consultancy services relating to insurance; telephone, telegraphic, transmission; telegram transmission; cable television transmission; web casting, web streaming, offering data, voice and graphical messaging services, maintaining and operating a network system; broadcasting programs via a global computer network; management of all logistics and compliance issues relating to the trans-border shipment of these goods and services; unloading of cargo; transport services, namely, the rental of vehicles; freight forwarding, packaging and storing of goods, namely, warehousing, rental of warehouses; technical, professional consultancy, namely, computer programming services, namely, the operation of a web site providing on-line newspaper featuring news and information on a variety of topics, via global computer network; computer programming, namely, web site design; advertising services for third parties, namely, industrial design and packaging design services; technical, professional consultancy, namely, engineering drawing; technical, professional consultancy, namely, conducting engineering surveys, industrial engineering, mechanical engineering, computer engineering, technical consultation in the field of engineering; technical, professional consultancy, namely, technical consultation in the field of issuing and managing of digital certificates; leasing and rental of computers and software; telecommunications, namely, rental of telecommunication facilities and data processing equipment; provision of online access, namely, the leasing of computer software and hardware for construction of a treetype address and name directory functioning as a directory service, namely, services of a data base, namely, leasing access time to and operation of a computer data base as well as collecting and providing of data, messages and information, projecting planning of telecommunication solution. to the extent use of the trade-mark in association with theforgoing wares wouldnot: (a) be contrary to Sections 57, 58 and 61 of the Canada post Corporation Act, R.S.C. 1985, c. C-10 (the "CPC Act"); (b) consttute collecting, transmitting and delevering letters to the address thereof within Canada as cntemplated by section 14 odf the CPC Act' and/or (c) contitute any of the activities contemplated by section 19 of the CPC act including but not limited to regulating the standards with respect to the conditions under which mailable matter may be transmitted in Canada and in respect of providing the operation of any services or systems established pursuant to the CPC Act.

Classification data

Disclaimer

The classification data is provided for information and searching purposes only. CIPO does not warrant the accuracy of the classes assigned to the trademark. This data has no legal value of any kind.

  • 7 - Machinery
  • 9 - Electrical, scientific and teaching apparatus and software
  • 12 - Vehicles
  • 14 - Precious and semi-precious metals, and jewellery
  • 16 - Paper and printed goods
  • 20 - Furniture, mirrors, articles not included in other classes
  • 25 - Clothing, footwear, headgear
  • 34 - Smoker's articles
  • 35 - Advertising, marketing, promotional and business
  • 36 - Insurance and financial
  • 38 - Telecommunications
  • 39 - Transportation and storage
  • 41 - Education and entertainment
  • 42 - Computer and scientific
  • 45 - Personal and legal

Claims

  • Priority Filing Date: February 04, 2000, Country or Office: GERMANY, Application No. 300 08 032.8/39 in association with the same kind of goods and in association with the same kind of services
  • Used in GERMANY
  • Registered in or for GERMANY on March 09, 2000, under No. 300 08 032

Action History

Actions
Action Action date Due date Comments
Filed 2000-04-06
Created 2000-04-13
Formalized 2000-05-11
Search Recorded 2001-10-02
Examiner's First Report 2001-10-24 2002-02-24
Extension of Time 2002-03-15 2002-08-24 Request Letter Date: 2002/02/25
Extension of Time 2002-09-05 2003-02-24 Request Letter Date: 2002/08/23
Extension of Time 2003-03-04 2003-08-24 Request Letter Date: 2003/02/24
Correspondence Created 2004-02-18 2004-06-18
Correspondence Created 2004-03-02 2004-07-02
Correspondence Created 2004-05-14 2004-09-14
Correspondence Created 2004-07-20 2004-11-20
Correspondence Created 2004-11-12 2005-03-12
Correspondence Created 2005-05-24 2005-09-24
Approved 2005-09-20
Advertised 2005-10-19 Vol.52 Issue 2660
Correspondence Created 2005-11-22
Opposed 2005-12-20 Opposition Filed.
Correspondence Created 2006-01-04
Rep for Service Changed 2006-04-05 From: 4 To: 59
Agent Changed 2006-04-05 From: 4 To: 59
Opposition Removed 2012-02-23 File removed from Opposition back into Advertised.
Allowed 2012-02-24
Allowance Notice Sent 2012-02-24 2012-08-24
Registered 2012-07-26 2027-07-26

Opposition History

Case # 1 : Canada Post Corporation - Closed

Statement of Opposition
Action Action date Due date
Extension of Time Granted to Opponent 2006-01-05
S/O Fee Received 2006-03-19
S/O Filed 2006-03-19
S/O Forwarded for Review 2006-04-05
S/O Sent to Applicant 2006-04-11 2006-11-11
Counter Statement
Action Action date Due date
Extension of Time Granted to Applicant 2006-05-19
With Consent - Extension of Time Granted to Applicant 2006-08-17
C/S Served on Opponent 2006-11-10 2007-08-10
C/S Filed by Applicant 2006-11-10
Evidence - Opponent
Action Action date Due date
Extension of Time Granted to Opponent 2006-12-01
With Consent - Extension of Time Granted to Opponent 2007-07-09
With Consent - Extension of Time Granted to Opponent 2007-07-30
Evidence Filed by Opponent 2007-08-09
Evidence Served on Applicant 2007-08-09 2008-03-09
Evidence - Applicant
Action Action date Due date
Extension of Time Granted to Applicant 2007-10-03
Evidence Filed by Applicant 2008-03-07
Evidence Served on Opponent 2008-03-07 2008-07-07
Reply Evidence
Action Action date Due date
Extension of Time Granted to Opponent 2008-05-07
Reply Evidence Filed by Opponent 2008-07-04
Reply Evidence Served on Applicant 2008-07-04 2009-05-05
Written Arguments
Action Action date Due date
Administrative Delay 2009-04-21
Written Argument Requested - Opponent 2009-05-11 2009-10-11
Written Argument Requested - Applicant 2009-05-11 2009-10-11
With Consent - Extension of Time Granted to Opponent 2009-07-13
With Consent - Extension of Time Granted to Applicant 2009-07-13
Written Argument Filed by Applicant 2009-10-09
Written Argument Filed by Opponent 2009-10-09
Correspondence Created 2009-11-05
Written Argument Exchanged 2009-11-05 2009-12-05
Decision
Action Action date Due date
Decision - Split Decision 2011-11-08
Decision Transmitted to Parties 2011-11-08 2012-01-08
Goods/Services Amended - Split Decision 2012-02-23
Amended Application
Action Action date Due date
Amendment to Goods/Services Received 2005-12-22
Correspondence Created 2006-01-17
Amended Application - Accepted 2006-01-17
Amendment to Goods/Services Received 2008-04-17
Correspondence Created 2008-05-14
Amendment to Goods/Services Received 2008-05-29
Correspondence Created 2008-09-29
Application Amended 2008-09-29
Amendment to Goods/Services Received 2008-12-16
Correspondence Created 2009-01-07
Application Amended 2009-01-07
Amendment to Goods/Services Received 2009-09-25
Amendment to Goods/Services Received 2009-10-05
Application Amended 2009-10-26
Amended Application - Accepted 2009-10-26
Correspondence Created 2009-10-27
Oral Hearing
Action Action date Due date
Request for Oral Hearing by Applicant 2009-11-20
Case Forwarded For Hearing 2009-12-15
Request for Oral Hearing by Opponent 2009-12-15
Correspondence Created 2010-12-01
Oral Hearing Scheduled 2010-12-01 2011-01-10
Case Forwarded for Decision 2011-02-10
Amended Statement of Opposition
Action Action date Due date
Amended S/O Filed by Opponent 2006-11-06
Amended S/O Served on Applicant 2006-11-06
Correspondence Created 2006-11-09 2006-11-30
Amended S/O Accepted 2006-11-30
Amended S/O Filed by Opponent 2008-06-09
Correspondence Created 2008-09-29 2008-10-20
Correspondence Created 2008-12-16 2009-01-06
Amended S/O Filed by Opponent 2009-01-21
Correspondence Created 2009-02-26 2009-03-19
Correspondence Created 2009-04-21 2009-05-05
Amended Counter Statement
Action Action date Due date
Amended C/S Filed by Applicant 2006-11-30
Amended C/S Served on Opponent 2006-11-30
Correspondence Created 2006-12-06 2006-12-06
Amended C/S Accepted 2006-12-06
Leave Evidence - Opponent
Action Action date Due date
Leave Evidence Filed by Opponent 2008-11-21
Leave Evidence Served on Applicant 2008-11-21
Correspondence Created 2009-01-07 2009-01-28
Correspondence Created 2009-02-09
Leave Evidence - Applicant
Action Action date Due date
Leave Evidence Filed by Applicant 2008-06-09
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