Update on the Speed of Trademark Examination

Jun 13 2022

CIPO issues AI-backed pre-assessment letters to accelerate the prosecution of pending trademark applications.

The Canadian Intellectual Property Office (CIPO) recently implemented a pre-assessment program giving trademark applicants a chance to accelerate the prosecution of their trademark applications. The program reflects CIPO’s broader initiative to curb the historic delays affecting trademark examination and registration in Canada.

CIPO’s pre-assessment strategy involves the use of AI technology to review the goods and services from within all pending and unexamined applications filed directly with CIPO. Applications will be accelerated if the definitions of their goods and/or services are deemed ‘acceptable’, which is only guaranteed if applicants have listed pre-approved definitions found in the Goods and Services Manual.

Applicants will receive one of two letters detailing the outcome of the assessments:

  1. The application contains acceptably defined goods and services and examination will be accelerated. No further action is necessary.
  2. The application contains unacceptably defined goods and/or services or improper Nice classifications. Applicants can still benefit from the acceleration by voluntarily amending their applications to incorporate pre-approved definitions. However, no action is necessary.

It is important to note that addressing the issues raised in a pre-assessment letter will not guarantee approval of the application, since the program does not evaluate substantive issues such as confusion.

In some cases, pre-assessment letters have contained incorrect reasons as to why an application’s definitions are unacceptable. CIPO is in the process of issuing corrections via replacement letters.

CIPO provides an opportunity to request expedited examinations for pending trademark applications.

On May 3rd, CIPO began accepting requests to expedite examinations for pending trademark applications, as long as the applicant can show that they meet one of the following criteria:

  1. 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;
  2. 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 and services listed in the application;
  3. The applicant requires registration of its trademark in order to protect its intellectual property rights from being severely disadvantaged on online marketplaces; or
  4. 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.

CIPO seems to be interpreting these criteria quite broadly, giving a broad range of applicants the opportunity to expedite their examinations.

If you have any questions about the opportunity to accelerate a pending trademark application, please contact a member of the Ridout & Maybee team.

Back to blog overview

Tags: Trademarks