Trademark applications are generally examined in the order they are received by the Canadian Intellectual Property Office (“CIPO”). The rationale being that examining an application out of order creates a favourable position for one applicant at the expense of other applicants. Therefore, expedited examination is generally not available for Canadian trademark applications, apart from the temporary practice implemented in light of COVID-19 (as discussed here). However, CIPO is now permitting expedited examination of Canadian trademark applications in certain circumstances.
Due to a significant backlog of unexamined applications, the examination stage for a trademark application can be quite lengthy in Canada. At present, applicants are receiving their first examiner reports over two years after filing their application. As shown in this chart*, the number of months from filing to receipt of the first examiner’s report has jumped from 10 months in 2018 to over 30 months at present. This is a significant delay in the processing time by examiners.
The good news is that CIPO recently announced that it will now be accepting requests for expedited examination. The request should come in the form of an affidavit or statutory declaration, by a person with knowledge of the facts, setting out the circumstances for the request. One or more of the following criteria must be met for the request for expedition to be accepted by CIPO:
- A court action is expected or underway in Canada relating to the applicant’s trademark in association with the applied for goods or services;
- The applicant is combating counterfeit products at the Canadian border relating to the applicant trademark in association with the applied for goods or services;
- The applicant requires registration of its trademark to protect its intellectual property rights from being severely disadvantaged online; or
- The applicant requires registration of its trademark to preserve its claim to priority within a defined deadline and following a request by a foreign intellectual property office. In such case, the request from the foreign office needs to be attached to the affidavit or statutory declaration.
The request for expedition should also include the name of the applicant and the application number. There is no fee associated with a request for expedited examination, but the request must be submitted by mail or fax.
If the request for expedited examination is accepted, CIPO will examine the application as soon as possible. An applicant that has been granted expedited examination can lose this advantage by missing a deadline or requesting an extension of time. If the request is denied, CIPO will detail why the request was denied.
The availability of expedited examination should help those that qualify combat the delays associated with examination of trademark applications in Canada. CIPO also announced that it is aiming to reduce delays in examination generally by hiring more examiners and implementing certain practices to hasten the process. Such practices include: not providing examples of acceptable goods or services in the first examiner’s reports; examining more quickly applications that cover only goods or services taken from the CIPO Goods and Services Manual; reducing the number of reports issued; refusing trademarks in a more timely manner; and only considering particulars arguments once to avoid piecemeal arguments.
These practice changes announced by CIPO are welcomed by brand owners as they seek to protect, commercialize, and exploit their Canadian trademark business assets.
To discuss how best to protect and utilize your trademark rights, please contact DLA Piper’s leading Intellectual Property & Technology team.
This article provides only general information about legal issues and developments, and is not intended to provide specific legal advice. Please see our disclaimer for more details.
[*] Chart sourced from: https://www.ippractice.ca/2021/05/trademarks-3/, reproduced with permission of Alan Macek.