Jan 27 2021
Effective December 14, 2020, an applicant may request expedited examination under a pilot initiative for a trademark application associated with medical goods or services related to COVID-19 in Canada.
In the context of the current COVID-19 pandemic, the Trademarks Office allows expedited examination for trademark applications associated with medical goods or services related to COVID-19 in order to ensure that Canadian consumers have timely access to COVID-19-related products and services.
This is an exception to the general examination practice of the Trademarks Office. In Canada, expedited examination generally is not available for a trademark application, as the Trademarks Act or Trademarks Regulations do not have any specific provisions regarding expedited examination. Accordingly, the Trademarks Office normally examines trademark applications in the order that they are received by the Trademarks Office, and does not consider requests for expedited examination. The Trademarks Office holds the view that the advancement of an application out of order creates a favoured position at the expense of other applicants.
An applicant must request expedited examination in the form of an affidavit or a statutory declaration, provided by a person having knowledge of the facts. The affidavit or statutory declaration needs to set out the specific circumstances and reasons for the request. The affidavit or statutory declaration must also clearly set out how one or more of the following criteria are met:
- A court action is 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; and/or
- An approval for use of the goods or services listed in the application has been submitted to, or has been obtained from, Health Canada under the same name as the trademark.
To be eligible for expedited examination, the application must include one or more of the following types of goods or services:
- pharmaceuticals, medical devices (such as diagnostic tests, ventilators), or medical protective equipment (such as sanitary masks for protection against viral infections, disposable gloves for medical purposes) that prevent, diagnose, treat, or cure COVID-19; and/or
- medical services or medical research services for the prevention, diagnosis, treatment, or cure of COVID-19.
A request for expedited examination must relate to one application for the registration of a trademark.
There is no official fee for a request for expedited examination. A request must be submitted by mail or fax.
If the request for expedited examination is accepted, the Trademarks Office will examine the application as soon as possible. According to the performance target of the Trademarks Office in 2020-2021, a first Examiner’s Report or the Notice of Approval should normally be issued within 22 months from the filing date. With expedited examination, an applicant should receive a first Examiner’s Report or the Notice of Approval in a shorter period.
A trademark application that receives expedited examination 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 Trademarks Office will notify the applicant with the reasons of denial.
Detailed information for requesting expedited examination may be found in the practice notice of Request for Expedited Examination at the URL: http://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr04872.html.
According to the Trademarks Office, the pilot initiative will continue until August 31, 2021, or until a date the Registrar deems appropriate.
This article is for information purposes only and does not constitute legal or professional advice.
Author: Roy Yang
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Tags: Biotechnology & Pharmaceutical, CIPO, Coronavirus, COVID-19, Pharmaceutical, Trademarks, Trademarks Act, Zhengxiao (Roy) Yang