CIPO’S NEW PRACTICES AND MEASURES FOR EXPEDITED EXAMINATION OF TRADEMARK APPLICATIONS
In order to reduce the current 24 to 30 months delay for the issuance of the first examiner’s report on trademark applications, the Canadian Intellectual Property Office (“CIPO”) has announced new practice notices with respect to Requests for expedited examination and new Measures to improve timeliness in examination of trademark applications.
In an effort to improve timeliness, the following practices will be followed from now on during the examination of a trademark application:
- Examiners will provide fewer examples of goods or services that would be considered acceptable when issuing an examiner’s report.
- Applications filed with CIPO that have statements of goods or services selected from a pre-approved list will be examined more quickly and in some cases prior to those applications that did not use this option.
- Examiners will reduce the number of reports issued and CIPO will, where reasonable, refuse trademarks in a more timely manner. To this end, examiners will only be required to maintain a particular submission or argument once. The applicant should 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.
Additionally, as of May 2021, CIPO has begun accepting requests for expedited examination of trademark applications.
Requests for expedited examination must be in the form of an affidavit or a statutory declaration that meets the requirements outlined in the practice notice and must clearly set out how 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.
If expedited examination is accepted, an Examiner will be assigned to the file and proceed with examination within a week.
Therefore, if you have a pending trademark application that has yet to be examined or approved and you believe you may qualify on one of the grounds above, this new program could help you in reducing significantly the delays to secure your trademark registration.