On May 3, 2021, the Canadian Intellectual Property Office (‘CIPO’) published two Practice Notices in an effort to address the backlog of applications awaiting examination and the increased examination turnaround times owing to the higher than anticipated filings of trademark applications following Canada's June 2019 accession to the Madrid System for the international registration of trademarks.
The first practice notice addresses Requests for expedited examination and permits the submission of requests for expedited examination of trademark applications. Requests for expedited examination must be in the form of an affidavit or a statutory declaration meeting the specific requirements outlined in the practice notice and must clearly identify one or more of the following criteria to justify expedited examination:
- Expected or underway court action in Canada relating to the trademark;
- Applicant is in the process of combating counterfeit products at the Canadian border with respect to the trademark;
- The applicant requires registration of the trademark to protect rights from being severely disadvantaged on online marketplaces; and
- The applicant requires registration of the trademark in order to preserve its claim to priority and following a request by a foreign intellectual property office.
The second practice notice sets out Measures to improve timeliness in examination including the following new practices which will be adopted by CIPO’s Trademarks Examination Section:
- Examiners will provide fewer examples of acceptable goods or services descriptions 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.
- Examiners will reduce the number of reports issued and refuse trademarks in a more timely manner, with Examiner’s being required to maintain a particular submission or argument only once before issuing a refusal.
More detailed information is set out in the practice notices linked above. Please contact our trademarks team for assistance.