The Canadian Trademark landscape has changed significantly over the last few years with a modernized trademarks regime. The challenges that have arisen since Canada’s 2019 accession to the Singapore Treaty, the Madrid Protocol, and the Nice Agreement, along with various input from stakeholders, have guided the Canadian Intellectual Property Office (CIPO) in adopting new measures to accelerate the prosecution of trademark applications. With the time to the issuance of a first examination report reaching recently 24-30 months in the case of some national applications, these measures need to be carefully considered. Two new practice notices are intended to address delays in examination, namely:
- CIPO – PN: Measures to improve timeliness in examination
- CIPO – PN: Requests for expedited examination
Measures to Improve Timeliness In Examination
How will these measures impact yours or your client’s Canadian filings? Please note the following:
- Trademark applications filed with the CIPO where the goods or services are selected from a pre-approved list will be more swiftly examined compared to applications where the applicant submitted its own list of goods and services. At the time of writing of this bulletin, adopting this approach saves two months, but CIPO expects that the gain will be more significant as the backlog is taken care of.
- CIPO Trademark Examiners will no longer be providing guidance of acceptable goods or services in the first office action other than by telephone. Once an amended application to revise any unsatisfactory descriptions of goods or services has been made of record, if then necessary, the Examiner will provide more definite examples of acceptable revisions.
- Where appropriate, Examiners will now issue final refusals in more quickly. To this end, the number of office actions will be reduced and Examiners will only be required to maintain a particular submission or argument once. The onus now lies with the Applicant and their agent to make every effort to provide complete arguments and responses to an Examiner’s first report.
Aside from the temporary practice for matters pertaining to the COVID pandemic, CIPO does not normally grant requests to examine trademark applications out of order. In current practice however, this is occurring regularly because objections to applications filed under the Madrid Protocol need to issue at the latest 18 months after receipt by CIPO.
Requests for Expedited Examination
Given the current wait times at the examination stage, CIPO has begun accepting requests for expedited examination of trademark applications. There is a requirement that the applicant submit an affidavit or sworn declaration attesting to one or more of the following reasons, namely:
- 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;
- 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;
- The applicant requires registration of its trademark in order to protect its intellectual property rights from being severely disadvantaged on online marketplaces; or
- 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.
If you have an pending trademark application that has yet to be examined or approved and you believe you may qualify based on one of the reasons above, please contact us. This program is very new, having been announced on May 3, 2021, and we do not yet have a clear depiction of how much time will be saved or how strictly CIPO will assess these eligibility conditions. Regardless, the potential time savings could be really valuable. If expedited examination is accepted an Examiner will be assigned to the file and proceed with examination within a week. This results in very significant reduction in the time to secure a registration.
Sources: https://www.canada.ca/en/services/business/ip.html
CIPO – PN: Measures to improve timeliness in examination
CIPO – PN: Requests for expedited examination
CIPO – Goods and Services Manual (TEM)
CIPO – Madrid Examination and Procedures Manual (MEPM)
Learn more about our trademarks practice here.
Kelly Theodosiou
Kelly Theodosiou is a senior trademark clerk who manages our Toronto Office’s IP Support Team and manages the IP software for the firm Nationally, including training and the implementation of processes and workflows. Kelly joined Fasken in 2017 coming from the Intellectual Property groups of other prominent Bay Street firms.
Kelly is a member International Trademark Association (INTA) as well as a member of the Intellectual Property Institute of Canada (IPIC).
Nathan Haldane’s intellectual property practice is focused on providing strategic advice in the field of trademarks, copyright, and advertising law.
Jean-Philippe practises technology and intellectual property law. He combines in-depth knowledge and strategic thinking to help companies in the software, entertainment, consumer products, natural resources, social networks, online services, e-commerce and manufacturing industries. He expertly acts for numerous companies as a trademark agent and advises them on their global trademark strategy.