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Managing the trademark backlog

Jaimie Bordman has prepared a summary of two recent Practice Notices published by the Canadian IP Office. You can read the summary LEARN MORE.

CANADA IP UPDATE:
CIPO PRACTICE NOTICES RE: TM BACKLOG

Since 2019, when the Trademarks Branch of the Canadian Intellectual Property Office (CIPO) began implementing major revisions to Canada’s Trademarks Act and Trademarks Regulations, lead times for examination have been steadily growing. Currently, applicants for trademark registrations in Canada can expect to wait over two years from filing for a first examination report!

On May 3, 2021, CIPO published two practice notices intended to help reduce lead times in examination.

The first notice reintroduces the practice of expedited examination, in certain circumstances. For several years now, CIPO had not permitted the advancement of trademark applications out of sequence, for any reason. With the publication of CIPO’s practice notice, applicants can now request expedited examination in the following circumstances:

  • A court action in Canada, relating to the applied for mark, is underway or expected;
  • The applicant is in the process of combating counterfeit products at the Canadian border;
  • The applicant requires registration of its trademark in order to protect its intellectual property rights from being “severely disadvantaged” in online marketplaces such as Amazon; 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.

In all cases, an affidavit or statutory declaration will be required to establish the presence of one of the above circumstances.

The second notice is entitled “Measures to improves timeliness in examination” and contains several provisions to this effect:

  • If terms in the statement of goods and services are objected to in a first examination report, examiners will no longer provide suggestions of alternative, acceptable terms;
  • If the goods and services of an application are defined exclusively using terms from CIPO’s Goods and Services Manual (GSM), the application will be examined more quickly, and possibly ahead of prior filed applications that do not exclusively use terms from the GSM;
  • Perhaps most significantly, CIPO will aim to issue fewer examination reports before refusing an application. In particular, examiners will only consider and respond to an issue raised in examination once. Additional argument or evidence submitted in a second response by an applicant will not be considered before the application is refused.

CIPO’s practice notices provide several useful ways in which brand owners can obtain trademark registrations in Canada more quickly. Taking the time to define goods and services using terms from the GSM at the outset of the application process can now lead to faster examination. And for brand owners dealing with infringement or counterfeiting issues in Canada, expedited examination will be a great option for obtaining a registration relatively quickly, allowing them to move forward with enforcement.

The practice notices also provide incentives for trademark applicants to put their best foot forward as soon as possible in examination. Applicants can no longer expect to have multiple chances to make their case on an issue, as was the case in past CIPO practice.

Contact Moffat & Co. today for more information and advice on how to expedite your Canadian trademark application.

Links to CIPO’s Practice Notices: