Effective May 3, 2021, the Canadian Intellectual Property Office (CIPO) is accepting requests for expedited examination of trademark applications.
Within recent years, CIPO’s turnaround time for examining new trademark applications has grown exponentially. To give some context, only a few years ago, CIPO examined new trademark applications, on average, within eight (8) months from the date of filing the application. At present, it typically takes upwards of two (2) years for CIPO to examine applications.
Bear in mind, that examination is only one step in trademark prosecution. When the process is considered in totality, a Canadian trademark applicant is typically facing a wait time of three (3) or more years between application and registration. This is barring any serious obstacles.
Unfortunately, many brand owners have been prejudiced by the length of time that CIPO takes to examine applications. From the side of trademark counsel, it is quite difficult to explain to a client that his/her application is likely to be examined all of two (2) years post filing.
Thankfully, some good news has come out of CIPO in this regard!
On May 3, 2021, CIPO published a practice notice entitled Requests for Expedited Examination. Prefaced in context on the “current wait times at the examination stage”, CIPO announced that it will begin accepting requests for expedited examination of trademark applications immediately.
This system is in addition to the temporary expedited examination available to trademark applications covering medical goods and services pertaining to Covid-19.
CIPO will accept requests for expedited examination in the form of an affidavit or statutory declaration establishing one or more of the following criteria:
- 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 combating 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; and
- 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.
Fees are not payable for these requests. Additionally, there are no restrictions or stipulations in terms of timing, so that, a request can be made in respect of a new application.
As the new system gets underway, it will be interesting to see how CIPO will treat with and interpret the different criteria. For example, it remains to be seen what types of evidence will be required to establish that a trademark is being “severely disadvantaged on online marketplaces” or to show that a court action is “expected” in Canada.
If CIPO accepts a request for expedited examination, it will examine the application “as soon as possible”. No doubt, some indication as to timing would be ideal given where we are today.
Trademark applicants and practitioners should ensure to watch deadlines carefully. Per the practice direction, a trademark application could lose the advantage of expedited examination if the applicant requests an extension of time or misses a deadline.
The availability of expedited examination is long overdue in Canada. In a system where trademark prosecution can take up to three (3) years, brand owners and trademark counsel will be relieved to know that there is a mechanism whereby trademark registration can be secured “sooner” where such registration is needed for certain important matters.