REDUCING DELAYS IN TRADEMARK EXAMINATION

In response to mounting criticism regarding the significant delays in the timeline from filing a trademark application to examination (which is currently at about 29 months), the Canadian Intellectual Property Office (CIPO) has today published two new practice notices for the purpose of reducing delays in examination.

One of the new practice notices “Measures to improve timeliness in examination” announces the following three action items that CIPO will implement to reduce wait times:

(1)   Fewer suggestions related to acceptable goods and services

Unless an amendment to the statement of goods or services can be made by way of a telephone amendment, examiners will no longer provide examples of acceptable goods or services in the examiner’s first report. Once the applicant has filed an amended application to re-specify any unacceptably-worded goods or services, the examiner will be able to provide more specific examples in a subsequent report.

(2)   Quicker examination of some applications

Applications that have a statement of goods or services selected from the Good & Services Manual will be examined more quickly, in some cases prior to those that do not use this option.

(3)   Fewer examination reports prior to refusal

Examiners will only be required to maintain a particular submission or argument once. Applicants are encouraged to make every effort to ensure that it provides a complete argument so that any submissions to the Registrar following an examiner's first report are not provided in a piecemeal manner.

The other practice notice titled “requests for expedited examination”, sees a return to a practice that was abolished several years ago, namely measures that allow for expedited examination of applications in specific circumstances.

In particular, CIPO will now accept requests for expedited examination in the form of an affidavit or statutory declaration, by a person having knowledge of the facts, that clearly sets out how one or more of the following criteria are met:

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 or 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 from the foreign intellectual property office will need to be attached to the affidavit or statutory declaration .

Requests for expedited examination must be submitted by fax or by mail to the attention of the Deputy Director (Examination Division).

If the request for expedited examination is accepted, the application will be examined as soon as possible. If the request is denied, CIPO will send written correspondence to the applicant explaining the reasons for denying the request.

Note that if a trademark application receives expedited examination, the accelerated handling of the application could be revoked if the applicant requests an extension or misses a deadline.

It remains to be seen whether these measures will result in any appreciable reduction in the wait time for examination, both in the short and long term. However, it is encouraging to see CIPO finally taking some action to address an issue that has been of serious concern to applicants and the profession alike for some time.