In an effort to accelerate the processing of trademark applications, the Canadian Intellectual Property Office (CIPO) has announced sweeping changes to its examination system.
The truth is that backlog has plagued CIPO for many years, so that, a trademark applicant is typically facing delays of 2.5 to 3 years to obtain a Canadian trademark registration.
On May 3, 2021, CIPO released a Practice Notice entitled “Measures to Improve Timeliness in Examination” with a stated objective of taking action to issue trademark rights quicker while remaining focused on quality as a key priority.
CIPO reports to have consulted with stakeholders and to have been guided by the following principles:
- to offer the greatest opportunity of time savings and increased efficiency with limited potential prejudice to applicants and stakeholders;
- address the biggest pain points, such as objections related to goods and services and the overall time applications are pending before the office;
- provide legal certainty, increase consistency and in turn, quality; and
- employ, where possible, the ideas that have been suggested by the profession.
Effective May 3, 2021, CIPO will be guided by the following practices during examination of trademark applications:
Suggestions related to acceptable goods and services
Typically, when goods and services are cited as objectionable, the trademark examiner will provide the applicant with alternative specifications comparable to the goods and services claimed. If the applicant is minded to accept the proposed alternatives, it is guaranteed to overcome the objection. Even if the applicant does not accept the examiner’s alternatives, they are still helpful in guiding the applicant or trademark counsel as to the type of specifications that will be deemed acceptable in the circumstances.
From our perspective as trademark counsel, we can say that these proposed alternative specifications have been very helpful. They help to inform our advice to clients and ultimate crafting of amended specifications for resubmission to the examiner.
CIPO has announced that examiners will provide fewer examples of acceptable goods and services when issuing an examiner’s report.
Specifically, unless the amendment is minor so that it can be dispensed with via CIPO’s telephone amendment system, examiners will no longer provide examples of acceptable goods and services in the examiner’s first report.
In essence, if the objection warrants the issuance of a written examiner’s report, the applicant will not be provided with examples of acceptable goods and services in the first instance. Once the applicant or counsel has filed an amended application to respecify the goods and services, the examiner will provide more specific examples in a subsequent report if they are still unacceptable.
It is conceivable that CIPO might have implemented this measure to get first reports out sooner than later. Perhaps though, this measure runs counter to the stated objectives of quality and timeliness. Afterall, any amount of guidance that the office can provide to trademark applicants, especially those who are unrepresented, will no doubt be valuable. Furthermore, a subsequent examiners report could be potentially be avoided if the applicant or counsel had some guidance by way of acceptable examples to inform the redefinition of goods and services.
The fact is that trademark applicants are dynamic and varied in their offerings, and so specifications of goods and services aren’t often framed exactly as listed in CIPO’s goods and services manual or pre-approved list. It can therefore be difficult even for trademark counsel to guarantee to an applicant that specifications falling outside of these listings will be acceptable. In these circumstances, having examples of acceptable goods and services from the outset (i.e the first examiner’s report) has proven to be very valuable.
It remains to be seen whether this initiative will facilitate quality and timeliness or whether it will inure to quite the opposite.
Some applications will be examined more quickly
Approximately 15% of all trademark applications filed with CIPO designate goods and services selected from CIPO’s pre-approved list. Pre-approved goods and services do not require further validation by an examiner. As such, CIPO has advised that applications listing specifications from the pre-approved list will be examined faster than applications with originally crafted specifications.
This is great for trademark applicants whose offerings are adequately covered by the pre-approved list. Applicants who don’t fall in this bracket, should not feel constrained to use the list, just so that their applications can be examined faster. It is our hope that with the other measures that CIPO has implemented, and will hopefully implement in the future, timeliness and efficiency will be the norm rather than the exception.
Fewer examination reports prior to refusal
Historically, an application under objection could languish in process for a long time on account of arguments back and forth between the trademark applicant/counsel and the trademark examiner. This is true even if several rounds of arguments are filed by the applicant or counsel on the same point of objection. CIPO has always had the power to refuse a trademark application, in which case, the applicant would have to challenge the decision in the Federal Court. The truth is that CIPO has rarely ever utilised this power.
CIPO has advised that examiners will now reduce the number of reports issued and will, where reasonable, refuse trademarks in a timelier manner. To this end, examiners will only be required to maintain a particular argument or submission once. Accordingly, if the examiner objects on a particular ground eg. non-distinctiveness, if the applicant files arguments which are rejected by the examiner, the application could be refused if the applicant files a subsequent round of arguments that do not result in the withdrawal of the objection. In essence, a trademark applicant will now have fewer chances of convincing a trademark examiner that an objection should be withdrawn.
As indicated above, if the examiner refuses a trademark application, the applicant’s recourse is to challenge the decision in the Federal Court. It is expected that such a measure could inconvenience the applicant in time and expenses.
In light of this new measure, it is now more important than ever for a trademark applicant to consult with counsel if an objection is raised. Arguments that are filed before CIPO will have to be proper and fulsome to ensure that the application has the best chance of success.
All in all, we welcome CIPO’s journey to a more efficient trademark prosecution system and anxiously wait to see how these new measures will be implemented in practice.