In the interest of timeliness and efficacy, the Canadian Intellectual Property Office (CIPO) allows for certain amendments to pending trademark applications to be initiated by way of a simple telephone conversation between the trademark examiner and the applicant or trademark agent on record.

CIPO’s mandate is to dispense with simpler matters via the telephone without the need to issue a formal Examiner’s Report (paper objection). The objective is to reduce delay and to generally make the trademark application system better for users.

In an applicable case, the trademark examiner will call the applicant or the appointed Canadian trademark agent to obtain a verbal authorisation to amend the pending application or to request that they submit a revised application electronically.

CIPO will accept verbal authorisations to:

  • add the required statement relating the use of a trademarked colour name system (eg. Pantone); and
  • add a disclaimer for the Canadian 11-point Maple Leaf where the trademark design incorporates it

CIPO will also call the applicant or its agent to request that a revised application be submitted to do the following:

  • delete a TM, MC or registration symbol from the trademark representation;
  • properly link priority claims to amended statements of goods or services;
  • amend typographical errors contained in a statement of goods or services;
  • amend errors in punctuation contained in a statement of goods or services;
  • make minor amendments to properly describe the applied for goods and services in ordinary commercial terms and/or to identify a specific good or service;
  • classify or remedy incorrect classification according to the Nice classification system;
  • make minor changes to the description of a colour claim;
  • provide a visual representation of the trademark in colour or in black and white;
  • provide a clearer visual representation of the trademark;
  • provide a translation or transliteration of the trademark;
  • provide modification to an incorrectly identified trademark type;
  • make minor changes to a trademark description; and
  • provide more information for an incomplete mailing address.

Once the Examiner makes the call, the applicant or trademark agent on record will have five (5) business days to respond. If the call goes unanswered, the examiner will leave a voice-message and the five (5) day timeframe will start running at that time. If a response is not received within time, a formal Examiner’s Report will be issued.

This telephone amendment system should hopefully inure to a more efficient system.

To allow a trademark applicant or agent to quickly address simple amendments through a telephone conversation should save some time and take some stress off the application system.

Trademark applicants may also benefit cost-wise especially in instances where the matter can be fully dispensed with on the telephone and there is no need to submit a revised application. Even in cases where a revised application is necessary, the time spent wading through a three-page Examiner’s Report will perhaps be more in billable hours than a quick telephone discussion with an examiner.

The Canadian trademark prosecution process is already lengthy. Any initiative to save time will be looked at favourably in the industry.