May 31, 2021
The Canadian Intellectual Property Office (“CIPO”) recently released two practice notices aimed at improving the speed of assessment of trademark applications.
Following Canada’s June 2019 accession to the Madrid Protocol, which allows an applicant to file a single application for protection in up to 124 countries, a two-tiered system has arisen in Canada, whereby applications submitted through the Madrid system (the “Madrid System”) are examined significantly faster than applications submitted through the national, non-Madrid system (the “Canadian System”).
As reported by Canadian Trademark Blog, under the terms of Canada’s accession to the Madrid System, applications must be reviewed within 18 months. However, trademark applications filed under the Canadian System are not examined for, on average, 28 to 30 months.
To address the disparity between the two filing systems, and in response to the current backlog of trademark applications submitted under the Canadian System, CIPO has outlined the steps it intends to take in two Practice Notices, which are both effective immediately:
Expedited Examinations – The first practice notice states that the Office of the Registrar of Trademarks will begin accepting requests for expedited examinations of trademark applications where one or more of the following four criteria is 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 combatting 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. In such cases, the request will need to be attached to the affidavit or statutory declaration.
Measures to Improve Timeliness of Examinations – The second practice notice outlines three practices that will be followed during the examination of trademark applications:
Examiners will provide fewer examples of goods and services that would be considered acceptable when issuing an examiner’s report;
Applications entirely comprised of pre-approved goods or services, which can be reviewed more quickly, may be prioritized over applications that do not use this option; and
Examiners will reduce the number of reports issued and the Office of the Registrar of Trademarks 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.
Author: Sam Galway