On Monday, May 3, 2021, the Canadian Trademarks Office published two new Practice Notices with respect to Requests for expedited examination and Measures to improve timeliness in examination intended to improve delays in the processing of trademark applications. With the time between filing and examination currently surpassing 30 months, applicants will largely welcome the news of the initiatives, particularly the new ability to request expedited examination.
This IP Update summarizes the new initiatives and provides guidance on how these changes could impact applicants’ filing and prosecution strategies.
The Practice Notice entitled Measures to improve timeliness in examination outlines specific practices the Canadian Trademarks Office will implement immediately to improve its timeliness of considering and issuing trademark rights.
Two of the new practices relate to the specification of goods and services. The other is more substantive.
No more help with goods and services amendments
In most cases when issuing a first report, Canadian examiners will no longer provide examples of acceptable goods or services where amendments are required. It is only once the applicant has filed an amended application that the examiner may provide more specific examples in a subsequent report.
Applicants encouraged to select from pre-approved list
Applications listing only pre-approved goods and services from the Canadian Goods and Services Manual will be examined “more quickly” than other applications since they will require less scrutiny from examiners.
Examiners will start issuing final refusals
The more substantive change introduced by this Practice Notice is that examiners will begin issuing final refusals. While examiners always had the power to refuse applications, it was a power that was rarely exercised. Rather, in the face of even the most hopeless substantive objections, applicants in Canada could continue filing the same arguments and examiners would keep responding with the same counterarguments. Applications could languish for years in examination this way; most applicants would eventually give up and those applications would simply lapse.
Now, examiners will only be required to address a particular submission or argument once. If a subsequent response does not raise new arguments and does not result in the withdrawal of the objection, the application could be refused. Once an application is refused, the only recourse is for the applicant to file an appeal with the Federal Court within two months.
Applicants would be well advised to put their best foot forward when responding to substantive objections raised by examiners in the first instance, or risk receiving a final refusal. This means that there will be more trademark prosecution strategies to consider in the future.
While the initiatives announced in the Measures to improve timeliness in examination Practice Notice are (for the most part) positive, it will likely take several months or more to clear out the current backlog. For this reason, the second Practice Notice entitled Requests for expedited examination is particularly promising.
Expedited examination available in more situations
As discussed in our IP Update dated December 16, 2020, until recently it had been more than 15 years since the Canadian Trademarks Office entertained requests for expedited examination of trademark applications. Despite delays continuing to increase over the years, and calls from trademark practitioners to bring back expedited examination, the Office maintained the position that examining an application out of sequence would create a favoured position at the expense of other applicants and was therefore not justified.
However, late last year, the Office announced that it would grant requests for expedited examination in the limited circumstance where an application lists goods or services for the prevention or treatment of COVID-19.
Now, the Office has expanded the list of situations for which it will begin accepting requests for expedited examination. For a request to be accepted, the applicant must establish that one or more of the following four criteria are met:
- 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; or
- 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. In such cases, the foreign request will need to be attached.
While there is no fee for expedited examination, the request must be accompanied by an affidavit or statutory declaration setting out the specific circumstances for the request. If granted, the Office will examine the application “as soon as possible.” If the applicant later misses any deadline or seeks an extension of time, the applicant could lose the advantage of expedited examination.
While not expected, this new practice is certainly welcome by trademark applicants and practitioners alike. In particular, it strengthens trademark owners’ ability to protect their rights in Canada by making it possible to secure a registration sooner where it is needed for certain enforcement activities.
What applicants can do
To take the most advantage of these new initiatives and avoid possible pitfalls, applicants should consider taking some positive steps including filing applications with the pre-approved list of goods and services, filing comprehensive arguments in response to examiner objections the first time around, and requesting expedited examination, where appropriate.