Those who have filed a trademark application in Canada have likely endured the timely process necessary to obtain an examination report, allowance, and registration. Currently, a trademark application takes about 24 to 27 months or more from its filing date for an examination by the Registrar of Trademarks. Even then, the certificate of registration is issued 30 to 32 months following the application's filing date, absent any objection or opposition. These delays can seriously affect trademark owners' capacity to identify and respond to cases of infringement, and to protect their trademarks generally.
On May 3, 2021, the Canadian Intellectual Property Office (CIPO) announced two Practice Notes – Requests for expedited examination and Measures to improve timeliness in examination – that address timelines in processing trademark applications. This article summarises the new changes.
Requests for Expedited Examination
In its first Practice Note, CIPO announced that it will begin accepting requests for expedited examination of trademark applications.
All expedited examinations may now be requested in the form of an affidavit or statutory declaration, with no associated fees, if:
- A court action is expected or underway in Canada with respect to the applicant's trademark in association with the goods or services listed in the application;
- The applicant is in the process of combating counterfeit products at the Canadian border with respect to the applicant's trademark in association with the goods or services listed in the application;
- The applicant requires registration of its trademark in order to protect its intellectual property rights from being severely disadvantaged on online marketplaces; or
- The applicant requires registration of its trademark in order to preserve its claim to priority within a defined deadline and following a request by a foreign intellectual property office.
If the request for expedited examination is accepted, CIPO will examine the application "as soon as possible." A request for an extension of time or missing a deadline may result in an expedited examination losing such benefit.
If the request is not accepted, CIPO will provide the reasons for the denial in writing.
Measures to improve timeliness in examination
In its second Practice Note, CIPO describes the specific initiatives it will adopt to improve timeliness in issuing trademark rights.
Suggestions related to acceptable goods or services
For the most part, examiners will no longer provide examples of acceptable goods or services in the first report. Only once the applicant has filed an amended application may examiners provide more specific examples in a subsequent report.
Some applications will be examined more quickly
Applications that have statements of goods or services selected from a pre-approved list will be examined more quickly than other applications, as they do not require further inspection by an examiner.
Fewer examination reports prior to refusal
Examiners will now address a particular submission or argument only once. A refusal will be final unless a subsequent response results in the withdrawal of the objection or raises new arguments.
Applicants are encouraged to make an effort to provide a complete argument or otherwise risk receiving a final refusal.
In short, if they wish to take advantage of CIPO's new changes, applicants are encouraged to file applications with goods and services from the pre-approved list; file complete arguments following an examiner's first report; and, request expedited examination where applicable.
Trademark registrations are important for brand owners seeking nationwide protection. The changes announced by CIPO may help brand owners expedite that process and enable them to protect and commercialize intellectual property assets.
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.