CIPO’s pre-assessment letter – an imperfect solution to a significant problem

CIPO’s plan

In response to criticism about the significant backlog of domestic trademark applications awaiting examination and the increasing wait times (presently 36+ months), the Canadian Intellectual Property Office (CIPO) has launched a new initiative to perform a “pre-assessment” of the goods and services recited in an application to determine whether these are compliant with Canadian practice requirements (i.e., do they describe a specific good or service using ordinary commercial terms and are they grouped and classed in the appropriate Nice Class(es)).

Using artificial intelligence, the goods or services recited in an application are automatically compared to a list of acceptable goods and services compiled by CIPO that presently counts over 100,000 entries. If the goods or services recited in the application are found on the list and are grouped in the correct Nice Class(es), a letter is issued advising the applicant that a pre-assessment of the application has determined that the goods or services recited therein are in order and that the application has been accepted for accelerated examination.

If the pre-assessment reveals a deficiency with the goods or services description, i.e., the description contains one or more terms that are not acceptable under Canadian practice or which have been retired from the list of acceptable terms, or the goods or services are not grouped in the appropriate Nice Class, a letter is issued advising the applicant of these deficiencies and encouraging the applicant to rectify the issues prior to examination. The letter will invite the applicant to amend the goods or services, or Nice Class(es) using the online service on the CIPO website. The letter will also stress that if all the goods or services are chosen from a pre-approved list of goods and services, examination of the application will be accelerated.

The effect of CIPO’s plan

For the lucky applicants that receive a positive pre-assessment letter, no action needs to be taken as the application will be assigned to a human examiner on a priority basis, for a complete examination. Absent some other issue with the application, such as a citation of a confusingly similar mark or a finding that the mark is not inherently distinctive, an application approved for accelerated examination will likely be  approved for publication in about 1-2 months[1] from the time it is assigned to the human examiner.

However, it is expected that most applicants will receive a pre-assessment letter identifying some issue with the goods or services, or the Nice Classification (a “negative pre-assessment letter”). For many of these applicants, CIPO’s suggestion of amending the goods, services or Nice Class(es) is neither practical nor cost effective, especially if they wish to recite goods or services from the pre-approved list.

More particularly, given that the pre-assessment letter does not identify the specific goods or services that are considered problematic, reviewing the application to determine which goods or services need to be redefined will take considerable time and effort, and add to the cost of prosecuting the application. Moreover, revising the application without knowing which goods and services are considered problematic could result in some goods or services being unnecessarily limited.  Finally, revising the goods or services to be more specific but without adopting terms from the pre-approved list does not assure that examination of the application will be expedited or that the application will not subsequently encounter an objection once it is reviewed by a human examiner.

Additional issues arise for those wishing to amend the description of goods or services with terms chosen from the pre-approved list. Consider the example of an application where the goods are described as “lemon flavoured gin”. While these goods are described in a manner that complies with the requirements of the Trademarks Act and Regulations, this specific description is not found in the pre-approved list.  Rather, the term “gin” can be found in the pre-approved list; however, replacing the current description with “gin” would not be permitted as it would broaden the scope of the statement of goods contrary section 35(2)(c)(i) of the Trademarks Regulations. One can write to the Trademark Office to request that the specific term “lemon flavoured gin” be added to the pre-approved list, but this requires further expenditure of time and effort.  Moreover, there have been anecdotal reports of cases where a specific term was added to the pre-approved list only to have CIPO subsequently retire or remove a less specific but still acceptable term from the list. If these reports are accurate, this would be a disturbing development, in that could lead to a list of pre-approved goods and services that is populated with unnecessarily specific and inflexible terms.

Finally, the list of acceptable goods and services is not a static document but is constantly evolving, with new terms being added and current terms being retired. For example, “distilling of spirits for others” used to be listed as an acceptable term but was recently retired because the Office now requires that the applicant indicate the specific spirit that is being distilled (e.g., vodka, gin, whiskey, etc..). If the goods or services recited in the application are “retired” from the list of acceptable goods and services at the time the application is examined, the applicant will be required to redefine or delete those goods or services.

What should you do?

If you have received a negative pre-assessment letter and you are wondering what to do, please consider the following:

-        Does your application cover a long list of goods or services? Are the goods or services unusual or uncommon, or are they highly complex or technical terms? If so, then reviewing and revising the goods or services will likely take considerable time and incur significant expense (note that in general, goods are much easier to redefine than services).

-        Is accelerated examination crucial? For some, a delay in registering their mark may be beneficial in that it gives the applicant additional time to begin using the mark in Canada (bear in mind that if use of the mark in Canada has not commenced after three years from the date of registration, the registration can be summarily cancelled for non-use). For others that have already begun using their mark in Canada and want the legal protection that is provided by a registration, accelerating examination of the application is of greater importance.

Conclusion

While CIPO is making an effort to reduce wait times in examination, their proposed solution of a pre-assessment letter is far from ideal and likely will not be practical for many applicants. Hopefully the accelerated examination of applications that have received a positive pre-assessment letter combined with the recent hiring of more trademark examiners will have a “trickle down” effect, reducing the wait times for all applications.

For more information about CIPO’s pre-assessment program, please contact Chris Dejardin (cdejardin@cassanmaclean.com).

[1] This is an estimate based on preliminary data