Canadian trademark applications currently face waits of up to two (2) years before receiving a first Examiner’s Report. On May 3, 2021, the Canadian Intellectual Property Office (CIPO) issued two (2) practice notices in an attempt to address the growing backlog of pending applications. The first practice notice allows expedited examination, while the second practice notice changes trademark examination procedures.
Applicants can now request expedited examination in limited circumstances. While no fee applies, requests will only be granted if at least one (1) of the following criteria applies:
- A court action is expected or in progress in Canada with respect to the trademark;
- The Applicant is seeking to interdict counterfeit products at the Canadian border;
- The Applicant requires registration of the trademark to prevent its intellectual property rights from being “severely disadvantaged on online marketplaces”; or
- Registration in Canada is required to preserve the priority of a corresponding foreign application. Such a request must be supported by a letter from the foreign office.
Though three (3) of the criteria are clear, the third basis is highly subjective and is not defined in the practice notice. Applicants selling products on online marketplaces, including Amazon®, may wish to seek advice on requesting expedited examination.
Changes to Examination Procedures
While many Applicants will welcome the possibility of expedited examination, the second practice notice issued by the CIPO may lead to more refusals of applications.
Three (3) major changes were made.
- Examiners will no longer provide examples of goods and services in ordinary commercial terms in their first Report. Examiners will continue to provide examples in subsequent Reports or through telephone amendments.
- Descriptions exclusively consisting of the pre-approved goods and services listed in the Goods and Services Manual will be examined quicker, though not through the expedited examination program. However, only 15% of present applications solely contain listed goods and services. Many Applicants will not find all of their products in the (somewhat arbitrary) Manual and will not benefit from this change.
- Examiners will immediately issue a final refusal if they maintain a previous objection over an Applicant’s arguments. For example, an Applicant may argue in a response that their mark is not clearly descriptive. If the Examiner does not accept that argument, a final refusal will be issued without a further Report.
The changes set out in these practice notices will have significant impacts on trademark examination. Will these changes help reduce the backlog?
For further information about protecting your Canadian trademark rights, please contact our experts at Brion Raffoul LLP.