Canadian Trademarks Office issues new limits on extensions of time for responding to office actions

Smart & Biggar

Prior to January 17, 2020, extensions of time were readily available during Canadian trademark prosecution.  A single six-month extension could be secured without providing any substantive reasons. Further six-month extensions could be secured by demonstrating exceptional circumstances. That has now changed as a result of a January 17, 2020 Practice Notice.

Effective immediately, the Trademarks Office will not grant any extensions of time for office actions issued on or after January 17, 2020, unless exceptional circumstances are demonstrated.

As for what might constitute an exceptional circumstance, the Canadian Trademarks Office has expanded the list to include:

  1. A recent change in trademark agent
  2. Circumstances beyond the control of the person concerned (such as illness, accident, death, bankruptcy, or other serious and unforeseen circumstances)
  3. Transfer (there is a pending assignment that would overcome the citation)
  4. Opposition proceedings are pending against the cited mark
  5. Section 45 non-use cancellation proceedings are pending against the cited mark
  6. Official mark (the applicant is in the process of actively negotiating a consent from the holder of an official mark)
  7. Division of a Protocol application
  8. Responding to a substantive objection (such as a confusion objection, descriptiveness objection or inherent distinctiveness objection)
  9. Compiling evidence of distinctiveness

Of particular note, for responding to substantive objections (such as confusion objections, descriptiveness objections or inherent distinctiveness objections), a single six-month extension of time is available once during the life of the application. For example, if an applicant obtains a six-month extension of time to respond to a confusion objection in response to an earlier Examiner’s Report, it will not be possible to obtain a six-month extension of time to respond to a subsequent Examiner’s Report (unless there is a different exceptional circumstance).

For any outstanding Examiner’s Reports issued prior to January 17, 2020, it is still possible to secure a single six-month extension without providing any substantive reasons.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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