Law & Practice

CANADA: COVID-Related Applications Expedited

Published: January 6, 2021

Cory Furman, Q.C. Furman IP Law & Strategy PC Regina, Saskatchewan, Canada INTA Bulletins—North America Subcommittee

Verifier

Catherine Dennis Brooks Miller Thomson LLP Toronto, Ontario, Canada INTA Bulletins—North America Subcommittee

The Canadian Intellectual Property Office (CIPO) issued a Practice Notice on December 14, 2020, permitting Canadian trademark applicants to seek expedited examination of applications for products and services related to COVID-19.

Eligible applications are those associated with pharmaceuticals, medical devices, medical protective equipment, or medical services and research services related to the prevention, diagnosis, treatment, or cure of COVID-19.

To receive expedited treatment of an application, the applicant will need to submit a request supported by an affidavit or statutory declaration attesting to the existence of one of the following three circumstances:

A court action is underway in Canada with respect to the trademark in association with the goods or services;
The applicant is endeavouring to combat counterfeit products at the Canadian border with respect to the goods and services and the trademark outlined in the application; or
An approval for use of the goods or services and the trademark in the application is in process with or obtained from Health Canada. (The Practice Notice lists several demonstrative Health Canada approval processes.)

CIPO will adjudicate the acceptability of an expedited examination request pursuant to this provision. Expedited status of trademark applications may be withdrawn if an applicant subsequently requests an extension of time or misses a deadline. The complete content of the Practice Notice can be found here.

The availability of expedited examination of COVID-19–related trademark applications will be particularly useful for Canadian applicants as examination is currently taking more than 24 months. Applicants wishing to avail themselves of the expedited examination route provided by the Practice Notice should consult with their Canadian trademark agent regarding the form and process for the filing of an expedition request.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.