On May 3, 2021, the Canadian Intellectual Property Office (CIPO) published two new practice notices: (1) Measures to improve timeliness in examination; and (2) Requests for expedited examination. These notices outline CIPO's plan to help clear its backlog of trademark applications, and to facilitate expedited review in particular circumstances. CIPO's practice notices operate as general guidelines, are not binding in any particular case, and are subject to change.
Measures to Improve Timeliness in Examination
To speed-up the examination of Canadian trademark applications, CIPO has adopted measures increase efficiency without compromising quality or the rights of applicants and stakeholders. In addition to hiring more staff, CIPO is now applying the following practices to expedite examination:
- Suggestions related to acceptable goods or services. Examiners will provide fewer examples of ‘acceptable' goods or services when issuing their first report or “office action”. More specifically, if the proposed changes cannot be made by way of a telephone amendment, the examiner will not include those examples in their first report. Once an applicant has filed an amended application to re-specify any unacceptably-worded goods or services, the examiner will then be able to provide more specific examples in a subsequent report.
- Some applications will be examined more quickly. Applications which use only pre-approved goods or services from CIPO's Goods and Services Manual will be examined more quickly and, in some cases, before earlier-filed applications that did not use this option.
- Fewer examination reports prior to
refusal. Examiners will reduce the number of reports
issued to applicants and CIPO will reasonably refuse trademarks in
a more timely manner. Further, Examiners need only maintain a
particular submission or argument once.
Accordingly, applicants should ensure that they provide complete
arguments to an examiner's first report – this will
ensure that they receive fulsome comments in response.
- For example, if an applicant receives a confusion objection from the examiner and furnishes evidence to overcome that objection, the examiner need only address that evidence in one report. Any further evidence of that nature would not be addressed again in a subsequent report. The trademark could be refused if the additional evidence does not result in the examiner withdrawing the objection. Comments on evidentiary deficiencies would be included in the Registrar's final decision to refuse the mark.
Requests for Expedited Examination
Trademarks applications are generally examined by CIPO in the order in which they are received. While there are no express provisions in the Trademarks Act or the Trademarks Regulations addressing expedited examinations, given the current wait times, CIPO will begin accepting requests for expedited examination.
Requests for expedited examination must be submitted in the form of an affidavit or statutory declaration by a person having knowledge of the facts and include the applicant's name and the application number (if known). A separate request is required for each application. There is no fee payable for making the request. The request must set out the specific circumstances and reasons for the request. One or more of the following criteria must be met:
- Court Action: A court action is expected or underway in Canada with respect to the applicant's trademark and in association with the goods or services listed therein.
- Counterfeit Products: The applicant is combatting counterfeit products at the Canadian border which relate to the applicant's trademark and in association with the goods and services listed therein.
- Online IP Violations: The applicant requires timely registration in order to protect its intellectual property rights from being severely disadvantaged on online marketplaces; or
- Priority: The applicant requires timely registration in order to preserve its claim to priority within a set deadline, and following a request by a foreign intellectual property office. In such cases, the foreign office's request must be attached to the affidavit or statutory declaration.
If the request is approved, CIPO will examine the trademark application as soon as possible. It is worth noting that an application could lose the advantage of an expedited prosecution if the applicant requests an extension of time or misses any deadlines during the application's expedited examination.
If the request if rejected, CIPO will provide the applicant with written reasons for same.
These are positive steps that will hopefully help reduce the backlog in examinations CIPO currently faces.
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