ARTICLE
6 June 2020

CIPO Introduces New Telephone Amendments To Increase Efficiency Of Trademarks Prosecution In Canada

SB
Smart & Biggar

Contributor

Smart & Biggar uncovers and maximizes intellectual property and technology assets for our clients. Today’s fast-paced innovation economy demands a higher level of expertise and attention to detail when it comes to IP strategy and protection. With over 125 lawyers, patent agents and trademark agents collaborating across five Canadian offices, Smart & Biggar is trusted by the world’s leading innovators to find value in their IP rights. As market leaders in IP, Smart & Biggar’s team is on the pulse when it comes to the latest developments and the wider industry changes that impact our clients. To stay informed, visit smartbiggar.ca/insights, including access to our RxIP Update (smartbiggar.ca/insights/rx-ip-updates), a monthly digest of the latest decisions and law surrounding the life sciences and pharmaceutical industries.
On May 20th, 2020, in an attempt to improve the timeliness and efficiency of its services, the Canadian Intellectual Property Office formally allowed trademark examiners to enter amendments...
Canada Intellectual Property

On May 20th, 2020, in an attempt to improve the timeliness and efficiency of its services, the Canadian Intellectual Property Office formally allowed trademark examiners to enter amendments to trademark applications in certain cases through telephone conversations with applicants or their Canadian agents.

Instead of sending an Examiner's Report for minor amendments, as required before May 20th, 2020, trademark Examiners are now allowed to call the Applicant of a trademark application (or their Canadian trademark agent) directly to approve the following amendments among others:

  • Removing a "TM" or registration symbol;
  • Correcting typographical errors;
  • Correcting priority claims which are not properly linked to an amended statement of goods or services;
  • Correcting obvious errors relating to the statement of goods or services;
  • Correcting Nice classification;
  • Completing a colour claim.

Allowing examiners to contact the Applicant or their agent directly by telephone instead of sending a written Examiner's Report should hopefully provide for a more efficient and possibly less expensive application process.

For more information on this, please contact a member of our Trademarks & Brand Protection team.

Originally published 26 May, 2020

The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.

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