May 06 2021
The Canadian Intellectual Property Office (CIPO) has published two new Practice Notices which attempt to address the current delays in processing of trademark examinations at CIPO (see link).
- Requests for expedited examination
In the context of the current wait times at the examination stage (as long as 30 months), effective immediately the Office of the Registrar of Trademarks (the Office) will begin accepting requests for expedited examination of trademark applications.
Requirements to request expedited examination
The Office will accept requests for expedited examination in the form of an affidavit or statutory declaration, by a person having knowledge of the facts, setting out the specific circumstances and reasons for the request. The affidavit or statutory declaration must clearly set out how one or more of the following criteria are met:
- 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. Note that in such cases the request will need to be attached to the affidavit or statutory declaration.
There is no government fee associated with a request for expedited examination.
If the request for expedited examination is accepted, the Office will examine the application as soon as possible. Where a trademark application receives expedited examination, it could lose this advantage if the applicant requests an extension of time or misses any deadline. If the request for expedited examination is not accepted, the Office will send written correspondence to the applicant explaining why the request was denied.
OUR RECOMMENDATION: Please contact us to discuss your eligibility to qualify for the expedited examination.
- Measures to improve timeliness in examination
In an effort to improve timeliness while remaining focused on quality as a key priority, effective immediately the following practices will be followed during the examination of a trademark application:
Suggestions related to acceptable goods or services
Examiners will provide fewer examples of goods or services that would be considered acceptable when issuing an examiner's report.
Specifically, unless the amendments to the statement of goods or services can be made by way of a telephone amendment, examiners will no longer provide examples of acceptable goods or services in the examiner's first report.
Once the applicant has filed an amended application to re-specify any unacceptably-worded goods or services, the examiner will be able to provide more specific examples in a subsequent report.
Fewer examination reports prior to refusal
Examiners will reduce the number of reports issued and the Office will, where reasonable, refuse trademarks in a more timely manner. To this end, examiners will only be required to maintain a particular submission or argument once.
To this end, the applicant should make every effort to ensure that it provides a complete argument so that any submissions to the Registrar following an examiner's first report are not provided in a piecemeal manner.
OUR RECOMMENDATION: In view of the above, when encountering objections in trademark applications, we strongly encourage a telephone interview with the examiner as this may be helpful in coming to resolution of outstanding objections. Please contact us to discuss your pending matters.
Some applications will be examined more quickly
Approximately 15% of all applications filed with the Office of the Registrar of Trademarks have statements of goods or services selected from a pre-approved list. Since pre-approved goods or services do not require further validation by an examiner, these applications and any amended applications entirely comprised of pre-approved goods or services will be examined more quickly, in some case prior to those that did not use this option.
Please contact us if you have any questions on the above.
This article is for information purposes only and does not constitute legal or professional advice.
Authors: Elliott Gold, Daphne Maravei
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Tags: CIPO, Daphne Maravei, Elliott Gold, Trademarks