In an effort to address significant trademark prosecution delays, the Canadian Intellectual Property Office (CIPO) issued two key Practice Notices on May 3, 2021.
In the first Practice Notice (Requests for expedited examination), CIPO announced that it will accept requests for expedited examination in the form of an affidavit or statutory declaration provided 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.
Requests must be submitted by mail or fax. There is no government fee associated with a request for expedited examination. In compliance with subsection 4(1) of the Trademark Regulations, a request for expedited examination must not relate to more than one trademark application.
If a request for expedited examination is accepted, CIPO will examine the application “as soon as possible”. Absent an approved expedited examination request, it takes approximately 24 months or more from the application filing date for an examiner to review a trademark application and issue an examiner’s report or approval notice. While no specific examination timeline is defined in the Notice, it is anticipated that the expedited examination procedure will cut many months off of the standard trademark examination timeline.
In the second Practice Notice (Measures to improve timelines in examination), in a further effort to speed up the examination process, effective immediately the following practices will be followed during the examination of a Canadian trademark application:
- Examiners will provide fewer examples of goods or services that would be considered acceptable when issuing an examiner’s report;
- Applications with statements of goods and/or services selected from a pre-approved list will be examined more quickly (Currently, only ~15% of all Canadian trademark filings include goods/services listings selected from a pre-approved list); and
- Examiners will reduce the number of reports issued and, where reasonable, will refuse trademarks in a more timely manner. To this end, examiners will only be required to maintain a particular submission or argument once.
In order to take advantage of CIPO’s expedited examination procedure and revised prosecution measures, and avoid potential pitfalls associated therewith, Canadian trademark applicants are advised to carefully consider:
(i) the applicability of the expedited examination criteria to their cases, including but not limited to the impact of any current or proposed:
(a) court actions against third party infringers;
(b) Canada Border Services Agency Request for Assistance applications;
(c) foreign priority trademark application filings; and/or
(d) enrolment in online marketplace registries, such as the Amazon Brand Registry;
(ii) whether it makes strategic sense to select their goods/services listings from pre-approved lists; and
(iii) how to provide complete arguments in response to first examiner objections.
If you have any questions regarding the impact of CIPO’s new Practice Notices on your Canadian trademark portfolio, please consult with a member of our trademarks team.