The Canadian Intellectual Property Office now limits the extensions of time available to applicants to respond to office actions. This is a significant change to Canadian trademark practice, and this article provides practical tips for managing this new reality.
The Canadian Intellectual Property Office ("CIPO") has advised that it will no longer routinely grant extensions of time to respond to office actions issued against pending trademark applications. Office actions continue to be issued with a six month deadline for response, and now every effort should be made to respond within that prescribed time. No requests for extensions of time will be considered, absent extraordinary circumstances. CIPO's Practice Notice, dated January 17, 2020, does not exhaustively define "extraordinary circumstances", but does provide nine examples of circumstances that will justify an extension of time:
- A recent change in the appointed trademark agent;
- Circumstances beyond the control of the person concerned (e.g. illness, accident, death, bankruptcy, or other serious and unforeseen circumstances);
- A request to record an assignment of an application or registration is pending at CIPO which, when recorded, would overcome a confusion objection raised against the applicant's application;
- An opposition has been filed (by either the applicant or a third party) against a cited co-pending trademark application;
- A Section 45 (non-use) cancellation proceeding has been initiated (by either the applicant or a third party) against a cited registered trademark;
- The applicant is in the process of actively seeking the consent of the owner of a cited official mark;
- A request is pending, in respect of Canada, for the division of the Madrid protocol application;
- A substantive objection was raised under paragraphs 37(1)(b), (c) or (d) of the Act (namely, a confusion objection, descriptiveness objection, or an objection that the applied-for mark is not inherently distinctive); or,
- The applicant is in the process of compiling evidence to show that the trademark was distinctive at the filing date of the application.
Tips for Managing Pending Applications
This is a significant change to Canadian trademark practice, and we offer the following advice for managing Canadian trademark applications under CIPO's more restrictive approach to extensions of time.
- Treat the deadline to respond to office actions that consist only of "formalities" objections as a firm and final deadline. "Formalities" include requests to revise statements of goods and services to be in ordinary commercial terms, or objections to Nice Classifications proposed by the applicant.
- Remember that CIPO has adopted a "one and done" approach with respect to extension requests granted on the basis that a substantive objection was raised or on the basis that evidence is being compiled to demonstrate distinctiveness. Once a request is made on the grounds of one of those circumstances, that reason cannot be relied upon again to obtain further extension. However, the Practice Notice does not preclude an applicant's ability to obtain more than one extension of a deadline to respond to a single office action where the circumstances justifying the extension have changed. For example, where an extension was requested on the basis that a substantive objection was raised, a second extension can be obtained on the basis that the applicant has decided to compile evidence showing distinctiveness.
- Keep in mind that CIPO's new practice with respect to extensions of time applies only in respect of office actions issued on or after January 17, 2020. Office actions issued prior to this date can still secure a six-month extension of time without having to demonstrate "exceptional circumstances". However, any subsequent extension of time request in respect of the same (or a subsequent) office action will be governed by the new Practice Notice.
- Remember that the illustrative examples of circumstances justifying an extension which are set out in the Practice Notice are non-exhaustive. Therefore, an applicant should consider whether other reasons may exist to justify an extension. For example, it is well known that Canada has some of the strictest requirements for describing goods and services. In cases where an application contains a very, very long list of goods and services, an applicant can receive an objection to almost every good and/or service. In those cases, provided that the applicant can demonstrate that it has been actively working to address the numerous objections by the initial deadline, a further six-month extension may well be granted
- Please note that if an extension of time request is not granted, the applicant will be considered to be in default pursuant to Section 36 of the Act, but the applicant will be given a final two months to rectify the default by filing a response.
The changes to CIPO practice may have benefits to some trademark owners. Prior to January 17, 2020, an applicant could generally count on having at least one full year from the date on which an office action was issued to file a response, without needing to provide any specific justification. As well, additional six-month extensions beyond that full year were available in cases where exceptional circumstances could be demonstrated to justify the extension.
Moreover, these automatic extensions applied in respect of each office action issued during prosecution, from the first one to the last one. The relative ease with which extensions could be obtained meant that in some cases a trademark application could remain "pending" for years on end with little consequence to the application's owner but with very real prejudice to interested third parties, such persons with co-pending applications being blocked by the earlier filed pending application or persons with an interest in using a similar mark.
While CIPO's Practice Notice does nothing to speed the initial examination of an application, which can now take between 18 and 20 months from filing, it will help to ensure that an application gets through the examination process more quickly, once that process has begun.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.