The delays in Canadian trademark examination are becoming excruciating. The Trademarks Act and the Trademark Regulations provisions do not expressly provide for expedited examination of a Canadian trademark application. The long-standing practice of the Canadian Intellectual Property Office ("CIPO") was to refuse requests for the expedited examination. Section 2.2 of the Trademark Examination Manual, the guide for trademark examiners, states:
CIPO generally examines trademark applications in the order they are received. The advancement of an application out of order creates a favoured position at the expense of other applicants and therefore the Registrar does not consider requests for expedited examination.
CIPO's Performance Targets
For transparency and accountability, CIPO has adopted service standards for completing most tasks. For example, CIPO strives to issue a filing notice within 2 weeks of receiving a new application online and within 5 weeks if the application is submitted by paper. CIPO has also published its 2020-2021 performance targets. Unfortunately, CIPO's current performance target to issue a first office action is 22 months after the trademark application was filed. This is a substantial delay and cause of concern for many brand owners, particularly those who are making a substantial investment in their brand or wanting to enforce it against others.
On December 14, 2020, CIPO issued its latest Practice Notice, Requests for expedited examination (the "Notice"), to address some of the concerns arising out of delayed examination. The Notice, published in the context of the COVID-19 pandemic, aims to accelerate the examination process of trademarks applications associated with medical wares and services related to efforts against COVID-19.
Requests for expedited examination of applications relating to medical wares and services related to COVID-19 must be supported by an affidavit or statutory declaration establishing:
- A court action is underway in Canada with respect to the proposed trademark;
- The applicant is in the process of combating counterfeit products at the Canadian border with respect to the proposed trademark;
- An approval for use of the goods or services listed in the application has been submitted or obtained from Health Canada under the same name as the trademark.
The trademark application must include at least one of the following type of goods or services to be eligible for expedited examination:
- pharmaceuticals, medical devices (namely diagnostic tests, ventilators), or medical protective equipment (including sanitary masks for protection against viral infections, disposable gloves for medical purposes) that prevent, diagnose, treat, or cure COVID-19; and
- medical services or medical research services for the prevention, diagnosis, treatment, or cure of COVID-19.
CIPO will review the request and inform the applicant as soon as possible if it is able to jump the queue and circumvent the 22 plus month delays.
While the ability to expedite Canadian trademark examinations for COVID-19 related applications is important, the implicit admission by CIPO that the delays in examination are too long will hopefully ensure that performance targets are improved and that expedited service is available in exigent circumstances for other types of applications as well.
For more information about Norton Rose Fulbright, see nortonrosefulbright.com/legal-notices.
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