Law & Practice

CANADA: Improvements for Timely and Expedited Examination

Published: June 9, 2021

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

Verifier

Cory-Furman

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

The Canadian Intellectual Property Office (CIPO) has announced measures to reduce examination time for Canadian trademark applications and to allow applicants to request expedited examination of applications. This is welcome news for trademark applicants as examination currently takes more than 24 months.

Two CIPO Practice Notices published on May 3, 2021, announced measures that were effective immediately. The time-saving measures follow:

  1. Examiners will not provide examples of acceptable goods or services descriptions when issuing a first examiner’s report. If amended descriptions are filed, examples may be provided in a subsequent report.
  2. Applications with pre-approved descriptions from the CIPO Goods and Services Manual will be examined more quickly than applications that do not use this option.
  3. Examiners will reduce the number of reports issued prior to final refusal of an application.

To request an expedited examination, an applicant must file an affidavit or statutory declaration of a person having knowledge of the facts, setting out the reasons for the request and compliance with one or more of the following criteria:

  1. A court action is expected or underway in Canada with respect to the trademark;
  2. The applicant is in the process of combating counterfeit products at the Canadian border with respect to the trademark;
  3. Registration is required to protect an applicant’s intellectual property (IP) rights from being severely disadvantaged in online marketplaces; or
  4. Registration is required to preserve the applicant’s priority claim following receipt of a request by a foreign IP Office.

These criteria are in addition to the COVID-19‒related basis for such a request, which CIPO has allowed since December 2020. (See the INTA Bulletin article.)

There is no fee associated with requesting an expedited examination, but each request must relate to only one application. If the request is accepted, the application will be examined as soon as possible.

The measures introduced by the CIPO Practice Notices will, in combination with CIPO’s staffing measures, help to reduce the backlog caused by the higher-than-expected filings of trademark applications and Canada’s accession to the Madrid System for the international registration of trademarks in 2019.

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.

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