The Canadian Intellectual Property Office (CIPO) published two new Practice Notices on May 3, 2021, aimed at tackling the impact of its significant and growing backlog of Canadian trademark applications filed under the national, as opposed to the Madrid, system. Following Canada's June 2019 accession to the Madrid Protocol system for filing trademark applications in multiple jurisdictions at the same time, applicants who file applications in Canada using the national, non-Madrid system have experienced increasingly lengthy delays in the initial and subsequent prosecution of their applications.
The average time, from the date of filing an application under the non-Madrid system to first examination, is currently in the 28 – 30 month range – and there are fears that delay may increase over the next few years. This stands in stark contrast to applications designating Canada pursuant to the Madrid system, which under the terms of Canada's accession to Madrid, must be examined within 18 months of filing. The reasons behind this significant difference are varied and complex. While it certainly wasn't CIPO's intention or desire, a two tiered system has arisen, with applicants who make direct national filings in Canada being significantly disadvantaged in contrast to those applicants who are able to utilize the Madrid system.
To its credit, CIPO has recognized the untenable situation that has arisen. The publication of these two Practice Notices is an attempt by CIPO to correct course.
Expedited Examination Requests – The first Practice Notice provides that CIPO will begin accepting requests for expedited examination of trademark applications. The reasons justifying the grant of such a request include:
- the applicant requiring registration of its trademark in order to protect its intellectual property rights from being severely disadvantaged on online marketplaces;
- a pending or anticipated court action in Canada with respect to the trademark; and
- the applicant being in the midst of combatting counterfeit products bearing the trademark at the Canadian border.
It remains to be seen how much of CIPO's already limited examination resources will be diverted away from prosecution of applications to responding to requests for expedited examination. It should be noted that this new provision for expedited examination requests is in addition to the ability to request expedited examination of applications for marks that include goods or services related to COVID-19.
Measures To Speed Up Examination – The second Practice Notice sets out three specific measures that CIPO has adopted to speed up processing of applications. First, Examiners will now provide fewer examples of goods and services descriptions that would be considered acceptable when issuing an objection to such descriptions. The second is that priority will be given to applications that include statements of goods/services that are selected from a pre-approved list. The third measure will see Examiners being required to maintain a particular submission or argument only once. If an applicant's response to an initial Examiner's Report doesn't adequately address all of the Examiner's objections, a final refusal will be issued rather than another Examiner's Report maintaining the initial objection. The impetus is now on applicants and their counsel to advance all arguments in response to an Examiner's Report, rather than piecemeal.
The efficacy of the above measures will take time to play out and the proof will be in the proverbial pudding. Watch this space for updates on CIPO's progress in reducing its trademark prosecution backlogs.
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